Ex Parte Davenport et al

Board of Patent Appeals and Interferences

May 9, 2012

10121325 (B.P.A.I. May. 9, 2012)

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.
10/121,325 04/12/2002 Gary Mitchell Davenport 1448.014US1 2487
27752 7590 05/09/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
FUBARA, BLESSING M
ART UNIT PAPER NUMBER
1613
MAIL DATE DELIVERY MODE
05/09/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte GARY MITCHELL DAVENPORT, RUSSELL LEE KELLEY,
ERIC KARL ALTOM, and ALLAN JOHN LEPINE
__________

Appeal 2011-012897
Application 10/121,325
Technology Center 1600
__________

Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a method for increasing the hunt performance of a hunting
dog. The Patent Examiner rejected the claims for obviousness. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
Claims 1-7, 32-38, 40-45, and 51-53 are on appeal. Claim 1 is
representative and reads as follows:
1. A method for increasing the hunt performance of a hunting dog which
comprises orally administering to the dog an effective amount of a diet
comprising unsaturated fatty acid EPA, unsaturated fatty acid DHA, or both,
in a total amount of the diet greater than 0.2 weight percent; and wherein the
diet comprises a total fat content from about 20 to about 28 weight percent
and greater than about 70 weight percent of the total fat content of the diet is
unsaturated fat and wherein the diet further comprises a saturated fat derived
from poultry.

The Examiner rejected claims 1-7, 32-38, 40-45, and 51-53 under
35 U.S.C. § 103(a) as unpatentable over Reinhart (EP 0 678 247, Oct. 25,
1995).

OBVIOUSNESS
The Issue
The Examiner’s position is that “Reinhart discloses the formulation of
the instant claims and Reinhart administers the feed formulation to [beagles]
as described above. While Reinhart does not specifically disclose increasing
hunt performance, it flows that administering dog food composition
containing eicosapentaenoic acid and docosahexaenoic acid, to dogs would
have the effects recited in claim 1 on the dogs, and in this case beagles,
which are hunting dogs.” (Ans. 6.)
Appellants contend that “Reinhart fails to disclose each and every
element of the presently pending claims,” and “fails to disclose increasing
hunt performance as well as administering to the dog an effective amount of
a diet comprising unsaturated fatty acid EPA, unsaturated fatty acid DHA, or
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both, in a total amount of the diet greater than 0.2 weight percent.” (App.
Br. 4.) “Moreover, since Reinhart fails to disclose orally administering the
diet as formulated to hunt dogs for the purpose of increasing hunt
performance but instead discloses its pet food product for use in reducing
inflammatory and allergic skin responses, Applicants submit that no
motivation exists to modify Reinhart to increase its level of EPA and/or
DHA to the level as presently recited.” (Id. at 5.)
The issues are:
whether Reinhart disclosed or suggested a diet comprising unsaturated
fatty acid EPA, unsaturated fatty acid DHA, or both, in a total amount of the
diet greater than 0.2 weight percent;
whether Reinhart disclosed or suggested orally administering its diet
to hunt dogs; and
whether the evidence supports the Examiner’s finding that feeding
Reinhart’s diet to a beagle for the purpose of reducing inflammatory and
allergic skin responses was inherently a method for increasing the beagle’s
hunt performance?

Findings of Fact
1. Reinhart described “[a] pet food product for use in reducing
inflammation and allergic skin responses. The pet food composition
contains omega-6 and omega-3 fatty acids . . . .” (Reinhart, Abstract.)
2. In Reinhart’s pet food, “the omega-3 fatty acids are preferably one or
more compounds selected from the group consisting of
eicosapentaenoic acid, docosahexaenoic acid, and alpha-linolenic
acid.” (Id. at 3, ll. 27-28.)
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3. Reinhart disclosed feeding beagles. (Id. at 3, ll. 35-54.)
4. The Examiner found that beagles are “old English hunt dogs.” (Ans.
6.)
5. An ordinary meaning1 of beagle is:
beagle [ˈbiːgəl]
n
1. (Life Sciences & Allied Applications / Breeds) a small sturdy breed
of hound, having a smooth dense coat usually of white, tan, and black;
often used (esp formerly) for hunting hares
. . .
vb
(Individual Sports & Recreations / Hunting) (intr) to hunt with
beagles, normally on foot.

6. Reinhart described its Example 4 as follows, in part:
Five diet compositions were tested including Iams Eukanuba Light,
Eukanuba Lamb & Rice, and three experimental diets which enhance
the quantities of omega-3 and omega-6 fatty acids in Iams Eukanuba
Original (Test diet 1), Iams Eukanuba Puppy (Test diet 2), and Iams
Eukanuba Adult (Test diet 3). The amounts of n-3 and n-6 fatty acids
for these diets were determined as percentages of the fatty acid profile
and total weight percent of each diet composition. The results are
given in Table 1.

(Reinhart 5, ll. 12-16.)

1 Collins English Dictionary – Complete and Unabridged © HarperCollins
Publishers 1991, 1994, 1998, 2000, 2003. Available:
www.thefreedictionary.com/beagle. Accessed: May 3, 2012.

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7. Reinhart’s Table 1 is reproduced here:
(Id., ll. 36-55.)

Principles of Law
The inherent results of prior art methods need not be disclosed in the
prior art. In re Woodruff, 919 F.2d 1575, 1577-78 (Fed. Cir. 1990)
(obviousness rejection affirmed where using claimed elements in the manner
suggested by the prior art necessarily resulted in claim-recited effect). In
general, a limitation is inherent if it is the “natural result flowing from” the
explicit disclosure of the prior art. Schering Corp. v. Geneva Pharms., Inc.,
339 F.3d 1373, 1379 (Fed. Cir. 2003).
If . . . the disclosure is sufficient to show that the natural result
flowing from the operation as taught would result in the performance
of the questioned function, it seems to be well settled that the
disclosure should be regarded as sufficient.

MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir.
1999) (citations omitted) (“Inherency is not necessarily coterminous with
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knowledge of those of ordinary skill in the art. Artisans of ordinary skill
may not recognize the inherent characteristics or functioning of the prior
art.”). “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
Claim 1 requires that EPA or DHA or both, are present in a total
amount of the diet greater than 0.2 weight percent. The Examiner directed
attention to Reinhart’s Table 1 as evidence that Reinhart’s diet comprised
n-3 fatty acids in a total amount of the diet greater than 0.2 weight percent.
Reinhart explicitly stated the amount of n-3 fatty acids was given as total
weight percent, and Table 1 explicitly included a column labeled “N-3
Percent of diet” showing that the amounts of n-3 fatty acids were greater
than 0.2 total weight percent. (FF 6 and 7.) Reinhart defined its n-3 fatty
acids as one or more of eicosapentaenoic acid (EPA), docosahexaenoic acid
(DHA), and alpha-linolenic acid. (FF 2.) We agree with the Examiner that
Reinhart’s teachings rendered Appellants’ amount of EPA or DHA or both
prima facie obvious.
Notwithstanding Reinhart’s explicit disclosure of “N-3 Percent of
diet” greater than 0.2 total weight percent in every one of its diets,
Appellants provide calculations based on of N-3 percentages relating to the
fatty acid profile (including all fatty acids in the diet) to argue that
Reinhart’s diet did not include EPA, DHA or both in a total amount greater
than 0.2 weight percent. (App. Br. 4-5.) The argument is misdirected and
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unpersuasive because it fails to establish that Reinhart’s explicit disclosure
of greater than 0.2 total weight percent for the N-3 fatty acids was wrong.
Although Appellants dispute whether Reinhart disclosed or suggested
orally administering its diet to hunt dogs, we agree with the Examiner’s
reasonable finding that by feeding beagles, Reinhart meant orally
administering the diet to beagles. The dictionary supports the Examiner’s
finding that a beagle is a hunting dog. (FF 5.)
Finally, we also agree with the Examiner that because Reinhart
disclosed or suggested every step in the claimed method, increasing hunt
performance would necessarily flow from practicing Reinhart’s method and
was inherent to Reinhart’s method. E.g., Woodruff, 919 F.2d at 1577-78;
Schering, 339 F.3d at 1379.
Claims 7, 32-38, 40-45, and 51-53 have not been argued separately
and therefore stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

SUMMARY
We affirm the rejection of claims 1-7, 32-38, 40-45, and 51-53 under
35 U.S.C. § 103(a) as unpatentable over Reinhart.
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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