Ex Parte Hill

Board of Patent Appeals and Interferences

Apr 21, 2010

10702406 (B.P.A.I. Apr. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte T. MARK HILL
__________

Appeal 2010-002865
Application 10/702,406
Technology Center 1600
__________

Decided: April 21, 2010
__________

Before LORA M. GREEN, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 3-13 and 15-30. We have jurisdiction under
35 U.S.C. § 6(b).

Appeal 2010-002865
Application 10/702,406

STATEMENT OF THE CASE
The claims are directed to compositions and methods for treating or
reducing the likelihood of dehydration in a neonatal bovine mammal.
Claims 4 and 10 are representative of the claims on appeal, and read as
follows:
4. A physiological composition for treating or reducing the likelihood of
dehydration in a neonatal bovine mammal, said composition comprising a
source of nutrients, said nutrients including crude protein from a milk
protein source and electrolytes, wherein said nutrients include dextrans
having at least two different saccharides in an effective amount for treating
or reducing the likelihood of dehydration in said neonatal bovine mammal
through administration thereof, wherein said composition includes an
amount of dextrans that is greater than an amount of any other of said
nutrients;
wherein said dextrans includes a majority of maltodextrins relative to
any other saccharide therein; and
said composition providing enough energy and protein to maintain a
body weight and growth of said neonatal bovine mammal, and wherein said
dextrans includes a mixture of maltodextrins and dextrose.

10. A method for treating or reducing the likelihood of dehydration in a
neonatal bovine mammal, said method comprising the steps of:
providing a physiological composition comprising a source of
nutrients, said nutrients including in an effective amount to treat or reduce
the likelihood of dehydration in said neonatal bovine mammal;
administering to said neonatal bovine mammal said physiological
composition wherein said source of nutrients comprises crude protein from a
milk protein source and electrolytes, wherein said nutrients include dextrans
having at least two different saccharides; and
said dextrans including a majority of maltodextrins relative to any
other saccharide therein;
providing enough energy and protein to maintain a body weight and
growth of said neonatal bovine mammal;
wherein an amount of said dextrans is greater than an amount of any
other of said nutrients.
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The Examiner relies on the following evidence:
Hollar US 6,465,032 B1 Oct. 15, 2002
Portman US 2003/0064135 A1 Apr. 3, 2003

We affirm-in-part.

PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has recently emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also id. at 421 (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.”). “The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Id. at 416. Moreover, an “[e]xpress suggestion to substitute one
equivalent for another need not be present to render such substitution
obvious.” In re Fout, 675 F.2d 297, 301 (CCPA 1982).
While the analysis under 35 U.S.C. § 103 allows flexibility in
determining whether a claimed invention would have been obvious, KSR,
550 U.S. at 418, it still requires showing that “there was an apparent reason
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to combine the known elements in the fashion claimed by the patent at
issue.” Id. “We must still be careful not to allow hindsight reconstruction of
references to reach the claimed invention without any explanation as to how
or why the references would be combined to produce the claimed
invention.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3
(Fed. Cir. 2008).
In addition:
Where a patentee uses the claim preamble to recite structural
limitations of his claimed invention, the PTO and courts give
effect to that usage. Conversely, where 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).

ISSUE (Hollar)
Does the evidence of record support the Examiner’s conclusion that it
would have been obvious to modify the reconstituting composition
containing carbohydrates and proteins as taught by Hollar, wherein the
carbohydrate comprises a mixture of maltodextrins and dextrose, with
maltodextrin as the most abundant carbohydrate?

FINDINGS OF FACT
FF1 The Examiner rejects claims 4-8, 10, 19, 20, and 30 under 35 U.S.C.
§ 103(a) as being rendered obvious by Hollar. (Ans. 3.)
FF2 The Examiner finds that Hollar teaches a composition comprising
carbohydrate and protein, wherein the carbohydrate may include sucrose,
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dextrose, lactose, corn syrup solids, high fructose corn syrup, maltodextrin,
and other sweeteners. (Id. at 4.)
FF3 The Examiner notes that “[i]n a preferred example the composition
taught comprises: 16.5% skim milk powder, 38.7% sucrose, 4.2% lactose,
16.2% dextrose, and 24.6% water.” (Id.)
FF4 Hollar “relates to reconstituting compositions containing
carbohydrates and proteins.” (Hollar, col. 1, ll. 11-12.) According to Hollar,
examples of products that require such products are caramel, texturized
caramel, and dulce de leche. (Id. at col. 1, ll. 21-24.)
FF5 Hollar teaches that the “carbohydrate of the liquid carbohydrate
composition is not limited and may include sucrose, dextrose, lactose, corn
syrup solids, high fructose corn syrup, maltodextrin, or other sweeteners.”
(Id. at col. 2, ll. 50-53.) Hollar teaches that the preferred carbohydrate is
sucrose, lactose, dextrose, or a combination thereof. (Id. at col. 2, ll. 55-56.)
FF6 In a preferred embodiment, the step of providing a liquid carbohydrate
composition starts with providing a liquid sucrose, which may then be
diluted with water, and optionally, additional carbohydrate, such as more
sucrose, corn syrup solids, maltodextrin, dextrose, lactose, or a combination
thereof, wherein the additional carbohydrate is preferably lactose. (Id. col.
3, ll. 36-65.)
FF7 Hollar provides the following exemplary formulations:
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(Id. at col. 3.)
FF8 The Examiner notes that “Hollar does not necessarily teach a
composition that comprises maltodextrin and whey protein concentrates.”
(Ans. 4.)
FF9 The Examiner concludes that Hollar renders obvious a composition
that has a “‘majority of maltodextrins to other saccharides’” as “Holl[a]r
teaches that sucrose, dextrose and maltodextrin are obvious variants of one
another as the carbohydrate source.” (Id. at 5.)
FF10 As to claim 10, the Examiner further concludes that it would have
been obvious to use a composition containing 24.6% water to reduce the
likelihood of dehydration, and that it would have been obvious that a
confectionary, such as that taught by Hollar, can be administered to any
mammal, including a neonatal calf less than three months of age. (Id. at 6.)

ANALYSIS
Appellant argues that Hollar teaches compositions having a “high
sucrose percentage in combination with skim milk powder, and a relatively
low percentage of dextrose, anhydrous milk fat, butter, and added water,”
which is to be used as a human confectionary. (App. Br. 26-27.)
Maltodextrin, Appellant asserts, “is only contemplated as an optional
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carbohydrate during the dilution stage.” Thus, Appellant asserts, one in the
confectionary art would not substitute maltodextrin for sucrose as
maltodextrin is only 1/10 as sweet as sucrose. (Id. at 27-29.)
We agree with Appellant that the Examiner has not provided a reason
as to why the ordinary artisan would use maltodextrin as the primary
carbohydrate, in a mixture of saccharide that includes a mixture of
maltodextrins and dextrose as required by each of the independent claims.
Specifically, as noted by Appellant, Hollar’s preferred carbohydrate is
sucrose, with the preferred mixture of carbohydrates comprising a mixture of
sucrose and lactose. Hollar teaches that the compositions are used in the
production of confectionaries, such as caramel, texturized caramel, and
dulce de leche, and the Examiner has not provided a reason as to why the
ordinary artisan would have used a mixture of maltodextrins and dextrose,
with maltodextrin as the most abundant carbohydrate, to produce a
reconstituting compositions containing carbohydrates and proteins as taught
by Hollar for use in such confectionaries.

CONCLUSION OF LAW
We conclude that the evidence of record does not support the
Examiner’s conclusion that it would have been obvious to modify the
reconstituting composition containing carbohydrates and proteins as taught
by Hollar, wherein the carbohydrate comprises a mixture of maltodextrins
and dextrose, with maltodextrin as the most abundant carbohydrate.
We are thus compelled to reverse the rejection of claims 4-8, 10, 19,
20, and 30 under 35 U.S.C. § 103(a) as being rendered obvious by Hollar.
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ISSUES (Combination of Portman and Hollar)
Does the evidence of record support the Examiner’s conclusion that it
would have been obvious to combine Portman with Hollar to arrive at the
composition of claim 4?
Does the evidence of record support the Examiner’s conclusion that it
would have been obvious to combine Portman with Hollar to arrive at the
composition of claim 10?

FINDINGS OF FACT
FF11 The Examiner rejects claims 3-13 and 15-30 under 35 U.S.C. § 103(a)
as being rendered obvious by the combination of Portman and Hollar. (Ans.
6.) Appellant asserts that each of the dependent claims stands or falls with
the independent claim on which it depends. (App. Br. 5.) But as Appellant
has not provided separate arguments as to each of the independent
composition claims, we group the claims into two groups, with group I
consisting of the composition claims, that is claims 3-9, 21, and 23-30, of
which we choose claim 4 to be representative; and group II consisting of the
method claims, that is claims 10-13, 15-20, and 22. 37 C.F.R.
§ 41.37(c)(1)(vii).
FF12 The Examiner finds that Portman teaches a sports drink composition,
wherein a dry composition is later diluted with water when the consumer is
ready to drink it. (Ans. 7.)
FF13 The Examiner finds that Portman teaches that, in a preferred
embodiment, the composition comprises “70.65 to 78.24% one or more
carbohydrates, 15.80 to 21.90% protein, 0.42 to 0.62 % first electrolyte, 0.07
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to 0.10% second electrolyte, 0.28 to 0.42 % third electrolyte, vitamin C,
Vitamin E, arginine, emulsifier, flavors, and colors.” (Id.)
FF14 The Examiner notes that Portman teaches that the “carbohydrate can
include dextrose and/or maltodextrin.” (Id.)
FF15 Portman teaches a nutritional composition that includes carbohydrates
and protein in a 4-1 ratio, arginine, Vitamins C and E, and electrolytes.
(Portman, ¶2.)
FF16 Portman teaches:
Carbohydrates include high and low glycemic sugars selected
from the group consisting of aldohexoses, disaccharides and
polysaccharides, such sugars being glucose, glucose polymers,
dextrose, maltose, maltodextrins, maltotriose, lactose,
galactose, sucrose, corn syrup, high fructose corn syrup, honey,
maple syrup, molasses, beet sugar, cane sugar, and sucanat
ketohexoses such sugars being arabinose, ribose, xylose,
fructose, levulose, psicose, sorbose, tagatose and sorbitol. Total
carbohydrates are in the range of 70.65% to 78.24% by weight
of the dry nutritional composition having a preferred percentage
of 74.63% by weight of the dry nutritional composition.

(Id. at ¶36.)
FF17 As to the protein sources, Portman teaches that the sources
are selected from the group consisting of calcium or sodium
caseinate, whey protein, whey protein concentrate, whey
protein isolate, demineralized whey protein, milk protein, soy
protein, soy protein isolate, soy protein concentrate, pea
protein, rice protein, casein hydrolyzate, meat protein
concentrate, soy flour and yeast concentrate. Total proteins are
in the overall range of 15.80% to 21.90% by weight of the dry
nutritional composition having a preferred percentage of
18.66% by weight of the dry nutritional composition.

(Id. at ¶37.)
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FF18 The Examiner notes that while “Portman does not necessarily teach a
composition that comprises maltodextrin and whey protein concentrates,”
the reference does render such a composition obvious. (Ans. 7.)
FF19 Specifically, the Examiner notes that it would have been obvious to
use maltodextrin as the carbohydrate source and whey protein as the protein
source as Portman teaches that maltodextrin is a viable carbohydrate source,
and that whey protein is a viable protein source. (Id. at 7-8.)
FF20 Thus, the Examiner concludes that “it would have been obvious from
the teachings of Portman to formulate a composition comprising 70.65 to
78.24% maltodextrin, 15.80 to 21.90% whey protein concentrate, 0.42 to
0.62 % first electrolyte, 0.07 to 0.10% second electrolyte, 0.28 to 0.42 %
third electrolyte, vitamin C, Vitamin E, arginine, emulsifier, flavors and
colors.” (Id. at 8.)
FF21 The Examiner further notes that “Portman does not teach a mixture of
carbohydrates.” (Id. at 7.)
FF22 The Examiner notes further that Portman does not teach a mixture of
carbohydrates, but relies on Hollar to make up that deficiency. (Id.)
FF23 As to the composition claims, i.e., claims 3-9, 21, 23, the Examiner
notes that the recitation that the composition is for “‘treating or reducing the
likelihood of dehydration in neonatal bovine a mammal,’” and “‘said
composition providing enough energy and protein to maintain a body weight
and growth of said neonatal bovine mammal’” are intended use, and not
given patentable weight. (Id. at 8-9.)
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FF24 As to the method claims, i.e., claims 10-13, 15-20, and 22, the
Examiner concludes that it would have been obvious to provide the
composition to a neonatal calf of any age. (Id. at 9.)

ANALYSIS
Appellant agues that the claimed composition is new, and that “[t]here
seems to be no explicit description by either reference as to the particular
claimed amounts of relative amounts of dextrans, maltodextrins, and
nutrients employed by appellant in his composition.” (App. Br. 40.)
Appellant’s arguments are not convincing. Portman teaches a
composition comprising carbohydrates, wherein the carbohydrate may be
maltodextrins. The Examiner relied on Hollar for teaching the use of
mixtures of carbohydrates, and Appellant has not provided any argument as
to why the Examiner’s fact finding is incorrect in that regard. Thus, while
the claimed composition may be new, that is, novel, we agree with the
Examiner that the combination of Portman and Hollar renders the
composition of claim 4 obvious.
Appellant argues that the preamble of independent claims 3, 4, 6, 9,
10, 24, 26 and 28 show that the scope of the claims is to be limited to
“treating or reducing the likelihood of dehydration in a neonatal bovine
mammal.” (App. Br. 35.) Appellant asserts further, that even if the
limitation is read as intended use, “the reference still must suggest or teach
of such use.” (Id. at 38-39.) Portman, Appellant asserts, is drawn to a sports
drink for humans, and thus is not analogous art to treating dehydration in a
neonatal bovine mammal. (Id. at 46-47.)
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Appellant’s arguments are not convincing as to the composition
claims, of which claim 4 is representative. Specifically, claim 4 is a
composition that comprises a crude protein from a milk protein source,
electrolytes, and carbohydrates, that is the dextrans. The recitation of
“treating or reducing the likelihood of dehydration in a neonatal bovine
mammal” in claim 4 is an intended use, and thus excludes only those
compositions incapable of being used in the recited manner. Even assuming
that certain embodiments of Portman might contain ingredients less than
perfectly suited to the claimed composition’s intended application, Appellant
points to no direct evidence showing that the maltodextrin-containing
compositions suggested by the references necessarily contain ingredients
making them unsuitable for the intended use. We therefore we agree with
the Examiner that the combination of Portman and Hollar renders the
composition of claim 4 obvious.
We conclude that the method claims, of which claim 10 is the only
independent claim, stand on a different footing. Claim 10 actually requires a
step of administering the composition to a neonatal bovine mammal. The
Examiner has not provided a reason as to why the ordinary artisan would
administer a sports drink for humans to a neonatal bovine mammal other
than asserting that it would have been obvious to provide the composition to
a neonatal calf of any age. We thus reverse the rejection as to claim 10 and
the claims dependent thereon.
Appellant also relies on the Declaration of Mr. Mark Hill. (App. Br.
48.) Appellant asserts several reasons as to why the Hollar and Portman
references would not render the claims obvious, such as Hollar and Portman
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allow lactose, whereas lactose cannot be present in order to facilitate
electrolyte uptake in calves suffering with diarrhea. (Id. at 49-52.)
According to Appellant, the Declaration establishes that following the
guideline of either Portman or Hollar could easily result in a composition
that would aggravate diarrhea in a calf. (Id. at 52.)
We have considered the Hill Declaration, but when considered with
the record as a whole, we do not find it convincing as to the issue of the
nonobviousness of the composition claims, as the Declaration focuses on
limitations that are not present in the composition claims. That is, stated
differently, the Declaration does not point to how the points made in ¶¶5 and
6 as to why the compositions of Portman and Hollar would be given to a
neonatal calf relate to the specific limitations in the composition claims. For
example, while the Declaration states that lactose and fat should not be
present in a composition to treat diarrhea in calves, the composition claims
do not exclude the presence of lactose and fats (see, e.g., Hill Declaration,
¶5), and we decline to read limitations into the claim that are not there. In
addition, while Portman may allow non-milk, non-whey proteins (see id.), it
does render the use of whey proteins obvious, thus rendering the claimed
composition obvious. Moreover, as discussed above, because Appellant has
not provided direct evidence showing that the maltodextrin-containing
compositions suggested by the prior art contain ingredients rendering them
unsuitable for treating or reducing the likelihood of dehydration of a
neonatal bovine mammal, we are not persuaded that the intended use
statement in the preamble of claim 4 distinguishes the claimed composition
from those suggested by the references.
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CONCLUSIONS OF LAW
We conclude that the evidence of record supports the Examiner’s
conclusion that it would have been obvious to combine Portman with Hollar
to arrive at the composition of claim 4.
We conclude further, however, that the evidence of record does not
support the Examiner’s conclusion that it would have been obvious to
combine Portman with Hollar to arrive at the composition of claim 10.
We thus affirm the rejection of claims 3-13 and 15-30 under 35
U.S.C. § 103(a) as being rendered obvious by the combination of Portman
and Hollar as to claim 4. As claims 3, 5-9, 21, and 23-30 stand or fall with
that claim, we affirm the rejection as those claims as well. We reverse the
rejection, however, as to claim 10, and the claims dependent thereon, that is
claims 11-13, 15-20, and 22.

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-IN-PART

cdc

MATTHEW R. JENKINS, ESQ.
2310 FAR HILLS BUILDING
DAYTON OH 45419
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