Ex Parte Frantz

Patent Trial and Appeal Board

Feb 21, 2017

13142922 (P.T.A.B. Feb. 21, 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.
13/142,922 06/30/2011 Nolan Zebulon Frantz 8346-03-HL 9081
23909 7590 02/23/2017
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
COLEMAN, BRENDA LIBBY
ART UNIT PAPER NUMBER
1624
NOTIFICATION DATE DELIVERY MODE
02/23/2017 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):
Paten t_Mail @ colpal. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NOLAN ZEBULON FRANTZ1
Appeal 2015-007700
Application 13/142,922
Technology Center 1600
Before ERIC B. GRIMES, JOHN G. NEW, and DAVID COTTA,
Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to “methods
for treating and/or preventing weight-related disorders in companion
animals” (Spec. 1), which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Claims 1, 6—12, 17—23, 28—34, and 39-44 are on appeal. Claim 1 is
illustrative and reads as follows:
1 Appellant identifies the Real Party in Interest as Hill’s Pet Nutrition, Inc.
(Br. 2.)
Appeal 2015-007700
Application 13/142,922
1. A method for maintaining or promoting a healthy body composition in
a companion animal in need thereof, which comprises feeding the
companion animal in need thereof an animal feed composition comprising
protein, fat, Vitamin C and Vitamin E, and further including lipoic acid or a
salt thereof in an amount effective to maintain or promote a healthy body
composition, wherein the effective amount is at least about 150 ppm.
Claims 12, 23, and 34 are the other independent claims. The body of
these claims is identical to that of claim 1, but the preambles differ: Claim
12 recites a “method for inducing loss of weight in a companion animal in
need thereof,” claim 23 recites a “method for inducing loss of body fat [in] a
companion animal in need thereof,” and claim 34 recites a “method for
increasing the percentage of lean muscle mass in a companion animal in
need thereof.”
DISCUSSION
The Examiner has rejected all of the claims on appeal under 35 U.S.C.
§ 103(a) as obvious based on Scherl.2 (Final Act. 2.) The Examiner finds
that Scherl discloses a method of promoting oral health in a companion
animal by feeding it a composition comprising antioxidants, including 50—
600 ppm of lipoic acid. (Id.) The Examiner notes that Scherl does not
disclose that its lipoic acid-containing composition has the effects stated in
the preambles of the instant claims, but finds that “all companion animals
are in need of oral health (para 0002), including those that are growing,
overweight, and obese. Thus, the patient population of Scherl, et al.,
encompasses the instantly claimed treated population.” (Id.)
2 Scherl et al., US 2006/0134014 Al, published June 22, 2006.
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Application 13/142,922
We agree with the Examiner that the claimed methods would have
been obvious based on Scherl. Scherl discloses “a method of promoting oral
health in a companion animal. . . comprising] causing the animal to ingest a
composition comprising at least one antioxidant.” (Scherl 110.) Scherl
states that “the antioxidant or mixture of antioxidants can be fed to a[n]
animal as a component of its food” (id. 136), where the food contains fat
and protein (id. 121 and Table 1).
Scherl discloses that suitable antioxidants include vitamin C, vitamin
E, and lipoic acid. (Id. 137.) “Lipoic acid, if present in the composition,
can be in an amount of at least about 100 ppm, at least about 50 ppm, or at
least about 25 ppm, up to about 600 ppm or up to an amount which is not
toxic to the animal.” (Id. 145.)
We agree with the Examiner that it would have been obvious, based
on Scherl, to include vitamin C, vitamin E, and lipoic acid (50-600 ppm) in
a companion animal’s food and to feed it to the animal. Scherl expressly
suggests using a mixture of antioxidants (id. 136), and states that
“[cjompanion animals such as cats and dogs require oral care.” (Id. 12.)
More specifically, Scherl states that “[according to the American Veterinary
Dental Society and leading veterinary dental specialists, 70% of cats and
80% of dogs have some form of gum disease by age 3.” (Id.) Thus, as the
Examiner noted (Final Act. 2), the population treated using Scherl’s method
overlaps the population of companion animals treated in the methods of the
instant claims.
Appellant argues, however, that “[promoting oral health in a
companion animal cannot be construed as or deemed to be equivalent to
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Application 13/142,922
Appellant’s claimed methods.” (Br. 6.) “Appellant therefore submits that
the Examiner has impermissibly relied on hindsight reasoning by using
Appellant’s invention to define the problem that the invention solves.” (Id.)
Similarly, Appellant argues that “[t]he Examiner fails to consider that the
instant claims are not directed to the animal feed composition itself, but
rather to methods of using the animal feed composition.” (Id. at 12.)
These arguments are not persuasive. “[WJhere a patentee defines a
structurally complete invention in the claim body and uses the preamble only
to state a purpose or intended use for the invention, the preamble is not a
claim limitation.” Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). For
example, the Federal Circuit has held that preamble language reciting “a
method for treating a cancer patient to effect regression of a taxol-sensitive
tumor, said method being associated with reduced hematologic toxicity” was
“only a statement of purpose and intended result. The expression does not
result in a manipulative difference in the steps of the claim.” Bristol-Myers
Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1376 (Fed. Cir. 2001).
Here, the preamble of at least some of the claims is entitled to some
weight in interpreting the scope of the claims. For example, claims 12, 23,
and 34 recited animals in need of inducing loss of weight, inducing loss of
body fat, and increasing the percentage of lean muscle mass, respectively.
Those recitations are reasonably interpreted to limit the method to
companion animals that are overweight.
However, as the Examiner has pointed out (Final Act. 2), Scherl states
that all companion animals are in need of oral care, and 70—80% of those
over three years old have gum disease. Thus, the claims’ preambles do not
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Application 13/142,922
distinguish the animals treated in Scherl from those treated in the claimed
method, and Appellant has not explained how the actual step of the claimed
method (feeding a companion animal) differs from the method of Scherl.
Thus, the method made obvious by Scherl is encompassed by the claims on
appeal.
Appellant also argues that “the specification establishes unexpected
results, which would serve to overcome any potential prima facie showing
of obviousness over Scherl.” (Br. 8.) Appellant argues that “Scherl teaches
that Vitamins C and E, lipoic acid, and fish oil (i.e., marine oil), as well as
many other antioxidants, are all equivalents,” and that based on this
teaching, the Specification’s evidence showing “9-fold improvement
exhibited by the Appellant’s inventive animal feed composition comprising
lipoic acid is a surprising and unexpected indicia [sic] of non-obviousness.”
(Id. at 9.)
Appellant’s evidence does not persuade us that the claimed methods
would have been nonobvious. Appellant points to the Specification’s Table
4, which shows “Change in body composition over 90 days” for dogs fed
“an AAFCO control food, a food containing fish oil, and a food containing
lipoic acid.” (Spec. 1123 and Table 4.) Table 4 shows that the “Control”
treatment resulted in a “Change in fat, g” of -61.2 over 90 days, compared to
-66.6 for the “Fish Oil” treatment, and -587.2 for the “Fipoic Acid”
treatment. (Id., Table 4.)
As the Examiner has noted (Ans. 9—10), however, the record lacks an
adequate explanation of the experiment that was carried out and the
significance of the data that are shown. For example, the Specification does
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Application 13/142,922
not state whether the foods fed to the dogs also contained vitamin C and
vitamin E, so as to represent a comparison of the claimed method (for the
food containing lipoic acid) with other similar foods. The Specification also
does not state the number of dogs in each treatment group or whether the
dogs in the different treatment groups were fed the same daily amount of
food over the course of the experiment. The Specification’s Example 1, for
instance, states that “[d]ogs were weighed weekly and had food doses
adjusted as needed in order to feed enough food to maintain their optimal
body weight.” (Spec. 1103.) Example 2 (which apparently led to the data
of Table 4) does not indicate how much the dogs were fed and whether
doses were adjusted.
The Specification also provides no explanation of the significance of
the “SE” (standard error?) or “Probability, P<” numbers of Table 4. In the
absence of a more complete explanation of the origin and meaning of the
data in Table 4, we cannot agree with Appellant that it demonstrates
unexpectedly superior results, compared to the closest prior art, as required
to show nonobviousness.
While Appellant argues that “the 9-fold improvement exhibited by the
Appellant’s inventive animal feed composition comprising lipoic acid is a
surprising and unexpected indicia [sic] of non-obviousness” (Br. 9), this
statement is no more than attorney argument, unsupported by evidence
supporting its accuracy. “Attorney’s argument in a brief cannot take the
place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). The
record lacks evidence showing the significance of the results shown in the
Specification and showing that those achieved with the claimed method
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Application 13/142,922
would be considered unexpectedly superior by a person of ordinary skill in
the art.
On balance, we conclude that Appellant’s evidence does not outweigh
the evidence favoring obviousness.
Claims 6—11, 17—22, 28—33, and 39-44 have not been argued
separately and therefore fall with claim 1, 12, 23, and 34. 37 C.F.R.
§ 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection on appeal.
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
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