Ex Parte Hall

Board of Patent Appeals and Interferences

Sep 21, 2011

10540095 (B.P.A.I. Sep. 21, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SIMON REGINALD HALL
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Appeal 2010-009712
Application 10/540,095
Technology Center 1700
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Before TONI R. SCHEINER, ERIC GRIMES, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of customizing a pet’s diet, which the Examiner has rejected as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 1 and 3-8 are on appeal. Claim 1 is the only independent
claim and reads as follows:
1. A method for determining the optimum macronutrient content of a diet
for an individual companion animal, the method comprising the steps of:
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providing over an extended and preselected period of time, different
food compositions to said animal in which each composition provides an
enriched source of fat, protein or carbohydrate, such that said animal can
select and consume different and preferred quantities of each said food
compositions in order to achieve an optimum consumption of fat, protein
and carbohydrate for said animal;
allowing said animal to consume the different and preferred quantities
of fat, protein and carbohydrate from each of said compositions over the
extended preselected period of time; and
determining, from the consumed amount of fat, protein and
carbohydrate from each of said compositions, a customized dietary regime
that provides the optimum macronutrient content of a diet for said individual
animal.
The Examiner has rejected claims 1 and 3-8 under 35 U.S.C. § 103(a)
as obvious based on WO ‘605,1 WO ‘630,2 Foreman,3 Jewell,4 Romsos,5 and
Wills6 (Answer 3). The Examiner finds that WO ‘605 discloses “feeding
one food in the morning and one food in the evening, i.e. different food
compositions, with different nutrient profiles” in order to determine a
“macronutrient preference for different times of the day by the animal” (id.
at 4), but does not “show that the method is for determining an optimum
macronutrient content” (id. at 5). The Examiner finds that the “protocol
stated in the WO ‘630 patent is similar to the WO ‘605 patent” (id.) and

1 Bruce et al., WO 01/97605 A1, Dec. 27, 2001
2 Bruce et al., WO 01/97630 A1, Dec. 27, 2001
3 Foreman et al., US 2001/0048955 A1, Dec. 6, 2001
4 Jewell et al., US 6,410,063 B1, June 25, 2002
5 Dale R. Romsos, et al. Regulation of protein intake in adult dogs, 182
JAVMA, 41-43 (1983).
6 Josephine M. Wills, Adult Maintenance, BSAVA Manual of Companion
Animal Nutrition & Feeding, 3 BRITISH SMALL ANIMAL VETERINARY
ASSOCIATION 44-46 (1996).
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shows that animals ate a higher protein content in the morning and higher fat
content in the evening (id.); “a dietary regime was determined based on
these results” (id. at 5-6). The Examiner also finds that Foreman and Jewell
disclose the amounts of carbohydrate that are required by claim 7 (id. at 6)
and that Romsos and Wills disclose the “learning phase” recited in claim 4
(id. at 6-7).
Appellant argues that claim 1 “requires that animals be presented with
multiple foods and allowed to select from them. This is a fundamentally
different methodology than the cited art which requires feeding individual
food compositions at separate times.” (Appeal Br. 6-7.) Appellant argues
that “[i]t is plainly not possible for an animal to select from the multiple
food compositions in the cited art where the animal is offered a single diet
composition at a time.” (Id. at 8.)
We agree with Appellant that claim 1, interpreted in light of the
Specification, requires providing the animal with more than one food at a
given feeding, “such that said animal can select and consume different and
preferred quantities of each said food compositions” (claim 1). The
Specification states that the “invention is based on the observation that when
consuming food, companion animals are attempting to reach a target intake
of each of the three macronutrients (protein, carbohydrate, fat) within a
given time period” (Spec. 1, ¶ 3).
The Specification states that the invention provides animals with the
opportunity to select between foods with different macronutrient contents
(id. at 1, ¶ 5). Similarly, the Specification states that the different
macronutrients must be provided in a format that allows the animal to select
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preferred quantities of them and consume different amounts of each (id. at 3,
¶¶ 15, 16). Finally, the Specification distinguishes between a “learning
phase” in which “the animal is preferably provided with a single diet
composition at any one feeding experience” (id. at 5, ¶ 21) and “the method
of the invention” (id. at 5, ¶ 25).
Thus, when read in light of the Specification, the claimed method
requires providing an animal with different food compositions (with
different macronutrient contents) simultaneously and allowing the animal to
consume the desired amount of each one, and determining based on the
amount of macronutrients consumed a customized diet that provides the
animal with the optimum macronutrient content.
The Examiner acknowledges that WO ‘605 discloses that “3 diets
with different levels of macronutrients were offered in rotation for 30 days”
(Answer 4) and the “protocol stated in the WO ‘630 patent is similar to the
WO ‘605 patent” (id. at 5). We agree. See WO ‘605 at 8: 13-14 (“All 3
diets were fed in rotation for 30 days; i.e. each cat was fed one diet per
day.”); WO ‘630 at 8:28 to 9:1 (same).
The Examiner has not pointed to any disclosure in either WO ‘605 or
WO ‘630 that describes simultaneously providing an animal with multiple
foods having different macronutrient contents, or that gives a person of
ordinary skill in the art a reason to modify the procedures of the WO patents
so as to provide multiple foods simultaneously. As discussed above, the
Examiner cites Foreman, Jewell, Romsos, and Wills only to meet the
limitations of dependent claims (see Answer 6-7). Thus, the Examiner has
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not shown that the method defined by claim 1 would have been obvious
based on the cited references.

REVERSED

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