Ex Parte Friesen et al

Patent Trial and Appeal Board

Apr 6, 2016

11215146 (P.T.A.B. Apr. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111215,146 08/30/2005
23909 7590 04/08/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Kim Gene Friesen
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.
7704-00-HL 3379
EXAMINER
WHALEY, PABLO S
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
04/08/2016 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):
Patent_Mail@colpal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIM GENE FRIESEN and RY AN MICHAEL Y AMKA
Appeal2013-010515
Application 11/215, 146
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN G. NEW, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a method
for providing nutrition for an animal. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the Real Party in Interest as Colgate-
Palmolive Company (see Br. 2).
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Application 11/215, 146
Statement of the Case
Background
"[I]ndustry has distinguished food for different animal attributes or
phenotypes. Such attributes or phenotypes have included animal size, age, or
body condition and in some cases foods have been proposed or marketed for
one or more specific breeds or phenotypically defined breed types" (Spec.
i-f 4). The Specification teaches that "methods for designing nutrition and
health programs including formulating foods for animals based on genomic
information would represent a useful advance" (Spec. i-f 8).
The Claims
Claims 1-20 are on appeal. Claim 1 is representative and is
reproduced below:
1. A method for providing nutrition for an animal,
compnsmg:
(a) identifying a genome-based breed cluster to which the
animal belongs from a first data set;
(b) selecting certain dietary ingredients from a second
data set, wherein the second data set is matched at least in part
to nutritional needs of animals of the genome-based breed
cluster identified from the first data set;
( c) designing a nutritional formula from the selection of
the dietary ingredients identified from the second data set; and
( d) preparing a food composition according to the
nutritional formula designed.
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The Issues
A. The Examiner rejected claims 1-16 and 18-20 under 35 U.S.C.
§ 103(a) as obvious over Bebiak,2 Parker,3 and Shields4 (Ans. 4--10).
B. The Examiner rejected claim 17 under 35 U.S.C. § 103(a) as obvious
over Bebiak, Parker, Shields, and Combs5 (Ans. 10-11).
A. 35 U.S.C. § 103(a) over Bebiak, Parker, and Shields
The Examiner finds that "Bebiak teaches a computer-based method
and system for manufacturing customized pet food for an animal" (Ans. 5).
The Examiner finds that Bebiak teaches the "computer controls the selection
of the proper types and amounts of ingredients added to the pet food ...
[b ]ased on the combination of pet profile information (i.e. genetic and
nutritional data" (Ans. 5).
The Examiner acknowledges that "Bebiak does not teach identifying a
genome-based breed cluster and using said cluster for selecting dietary
ingredients" (Ans. 5). The Examiner also acknowledges that "Bebiak and
Parker do not teach selecting certain dietary ingredients from a second data
set ... [that] is matched at least in part to the nutritional needs of animals of
specific breeds" (Ans. 6).
The Examiner finds that Parker teaches "a method for identifying
genome-based breed clusters" (Ans. 5). The Examiner finds that Shields
2 Bebiak et al., US 6,358,546 Bl, issued Mar. 19, 2002.
3 Parker et al., Genetic Structure of the Purebred Domestic Dog,
304 Science 1160-1164 (2004).
4 Shields, Jr. et al., US 6,156,355, issued Dec. 5, 2000.
5 Combs, M., US 2005/0010476 Al, published Jan. 13, 2005.
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teaches "breed-specific canine food formulations and feeding guidelines"
(Ans. 7).
The Examiner finds it obvious:
to have modified the method made obvious by Bebiak and
Parker for selecting dietary ingredients that match the
nutritional needs of animals of the genome-based breed
cluster data, with a reasonable expectation of success, since
genome-based breed clusters were known, as taught by
Parker, since Bebiak provides customized nutritional
formulas for selecting types and amounts of dietary
ingredients based on pet profile data representing breed and
genetic information, as set forth above, and since dietary
ingredients representing the nutritional needs of groups of
dogs with the same genetic makeup were known in the art,
as taught by Shields. The motivation would have been
combining prior art elements according to known methods
to yield predictable results.
(Ans. 7).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that Bebiak, Parker, and Shields
render claim 1 obvious?
Findings of Fact
1. Bebiak teaches "methods for customizing pet food allow the
manufacturing of a pet food which is customized to the nutritional
requirements of an individual pet. The customized pet food is tailored to
individual characteristics of the pet, which can include species, breed ...
and additional genetic and health information" (Bebiak, col., 11. 48-53).
2. Bebiak teaches that "main computer 104 includes a database
which stores nutritional information, which is combined with the individual
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pet profile to generate a customized pet food formula" (Bebiak, col. 3, 11.
26-29).
3. Bebiak teaches that the "customized pet food can be tailored to
provide a desired nutritional balance for a pet of a specific age, gender and
weight, at a particular time of year, and having a specific health problem,
such as, for example, a food allergy" (Bebiak, col. 6, 11. 23-27).
4. Parker teaches that "[s]trong genetic differentiation among dog
breeds suggests that breed membership could be determined from individual
dog genotypes" (Parker 1161, col. 2).
5. Parker teaches that "[w]e next examined whether a dog could
be assigned to its breed on the basis of genotype data alone. Using the direct
assignment method with a leave-one-out analysis, we were able to assign
99% of individual dogs to the correct breed" (Parker 1161, col. 3 ).
6. Shields teaches "to provide improved dog food formulations
designed for specific breeds that are designed based on the genetic diversity
of different dog breeds" (Shields, col. 3, 11. 30-33).
7. Shields teaches that
In addition to the common features listed above, the
subject breed-specific formulations contain other unique
features. These differences include the kibble size and shape
. . . as well as the ingredients and nutrient levels. The
variety of shapes and sizes includes a triangle Sporting Diet,
square Terrier Diet, rectangular Non-Sporting Diet, almond
shaped Hound Diet and round Toy, Working and Herding
Diets in variable diameter and thickness appropriate for their
sizes.
Specifically, each diet is uniquely different as well
with respect to specific nutrient targets (both nutrients listed
in the standard AAFCO Nutrient Profile and some potential
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conditionally essential nutrients which may be of benefit in
specific animals), ingredients excluded to prevent
intolerances (protein sources and food additives) and
functional ingredients. These adjustments have been made
because the size and shape outside and metabolism inside
differs among breed groups
(Shields, col. 7, 11. 21-39).
8. Shields teaches that "liver copper storage disease [is] present in
Bedlington Terriers and West Highland Terriers" and that "[t]his condition
is typically treated by a combination of dietary copper restriction and
additional zinc supplementation .... Level of copper supplementation is
lower and zinc higher in the Terrier formula than in any of the other Group
Specific Formulas" (Shields, col. 13, 11. 13-33).
Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious \'l1hen it does no more than yield predictable results."
KSR!nt'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability." Id. at 417.
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 4--10; 22-28; FF 1-7) and agree that
claim 1 is rendered obvious by Bebiak, Parker, and Shields. We address
Appellants' arguments below.
We recognize, but find unpersuasive, Appellants' argument that
"[ n ]one of the cited references fairly suggests, much less teaches,
Applicants' recited second data set matched at least in part to nutritional
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needs of animals of the genome-based breed cluster identified from the first
data set" (Br. 3--4).
Bebiak suggests a first data set comprising pet genetic data including
breed data (FF 1-2) so that the pet "food can be tailored ... for a pet ...
having a specific health problem" (FF 3). Parker teaches that breeds may be
identified by genotyping (FF 5). Shields teaches the further tailoring of pet
food based upon breed data (FF 6) including diets tailored for specific
breeds (FF 7) including the inclusion or exclusion of specific dietary
ingredients such as zinc and copper tailored to a specific breed (FF 8).
We agree with the Examiner that "[c]ombining such data would have
been a computational exercise that would have been well within the
capabilities of the ordinary artisan" and that the "motivation would have
been to beneficially provide food formulations that account for genetic
differences between pet breeds, as taught by Shields" (Ans. 13-14).
We recognize, but find unpersuasive, Appellants' argument that "the
Examiner's rejections under§ 103 are based on an impermissible use of
hindsight" (Br. 4 ).
While we are fully aware that hindsight bias may plague
determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36
(1966), we are mindful that the Supreme Court has clearly stated that "if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill." KSR, 550 U.S. at 417. In this case, we agree with
the Examiner that the person of ordinary skill would have found it obvious
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to customize pet food dietary ingredients (FF 1-3) based on the association
of certain ingredients with breed health information taught by Shields (FF 6-
8) and to assign breed based on known genotyping methods (FF 5).
We recognize, but find unpersuasive, Appellants' arguments that
address the references separately, such as the "problem addressed by Bebiak
is different from that addressed by the instant application" (Br. 5); that the
"general reference to 'genetic' information in Bebiak, however, cannot be
construed as teaching or suggesting genome-based clustering analyses of the
type as instantly claimed" (Br. 6); that there "is no suggestion in Parker or in
Bebiak that there could be differences in nutritional requirements among
genome-based breed clusters" (Br. 7); and that "Shields has created groups
that do not present any evident correlation with the genome-based clusters of
Parker" (Br. 8).
"The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference .... Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art." In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
Here, Appellants' arguments do not address the combined teachings
of Bebiak, Parker, and Shields, but instead dissect each reference separately.
While Bebiak does not teach genome-base clustering, Parker does (FF 5).
When Bebiak refers to genetic information and breed as relevant to pet diet
customization, and Shields teaches that breed specific diseases may
implicate diet ingredient selections (FF 1-3, 6-8), the ordinary artisan would
reasonably find Parker's disclosed method of assigning breed using genetic
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information (FF 5) an obvious approach to correctly customize Bebiak's pet
food with the correct breed specific ingredients for the particular pet or
breed of pet (cf Ans. 16).
We recognize, but find unpersuasive, Appellants' argument that "[t]o
modify Bebiak to provide a pet food customized to the health and nutrition
requirements of any member of a genome-based cluster subverts Bebiak's
express purpose and principle of operation" (Br. 7).
Appellants' premise is incorrect because both Bebiak and Shields are
focused on providing pet food that is breed-customized, Bebiak specifically
teaching that "pet food is tailored to individual characteristics of the pet,
which can include ... breed ... and additional genetic ... information" (FF
1) while Shields teaches "to provide improved dog food formulations
designed for specific breeds" (FF 6).
While we conclude that the combination of Bebiak, Parker, and
Shields reasonably suggest providing a pet food customized for every
member of a particular breed of animal consistent with the interpretation of
claim 1 argued by Appellants, we note that claim 1 does not exclude
methods for customizing nutrition for a single individual animal as expressly
taught by Bebiak (FF 1). See In re Self, 671F.2d1344, 1348 (CCPA 1982)
("[A]ppellant's arguments fail from the outset because ... they are not based
on limitations appearing in the claims.")
Conclusion of Law
The evidence of record supports the Examiner's conclusion that
Bebiak, Parker, and Shields render claim 1 obvious.
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B. 35 U.S.C. § 103(a) over Bebiak, Parker, Shields, and Combs
Appellants do not separately argue the claims in this obviousness
rejection. Having affirmed the obviousness rejection of Claim 1 over
Bebiak, Parker, and Shields, we also find the further combination with
Combs renders claims 17 obvious for the reasons given by the Examiner
(see Ans. 10-11).
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over Bebiak, Parker, and Shields. Claims 2-16 and 18-
20 fall with claim 1. 37 C.F.R. §41.37(c)(l)(iv).
We affirm the rejection of claim 17 under 35 U.S.C. § 103(a) as
obvious over Bebiak, Parker, Shields, and Combs.
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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