Ex Parte Inoue

Patent Trial and Appeal Board

Mar 20, 2018

14168741 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/168,741 01/30/2014
32628 7590 03/22/2018
KANESAKA BERNER AND PARTNERS LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314-2848
FIRST NAMED INVENTOR
Shintaro INOUE
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.
KOH-002A 2104
EXAMINER
WHEELER, THURMAN MICHAEL
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
03/22/2018 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):
office@uspatentagents.com
docketing@ipfirm.com
pair_lhhb@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINTARO INOUE
Appeal2017-001916
Application 14/168,741 1
Technology Center 1600
Before JEFFREY R. FREDMAN, RYAN H. FLAX, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEWMAN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a method for
preventing and treating mastitis for livestock animals. The Examiner
entered a final rejection for obviousness. 2
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
1 Appellant identifies "FLORAL MINERAL CORPORATION RESEARCH
LABORATORY" as the real party in interest. Br. 2.
2 The Examiner's rejection of claim 9 under 35 U.S.C. § 112, first
paragraph, was mooted by Appellant's cancellation of claim 9. Ans. 2, Br.
3.
Appeal2017-001916
Application 14/168,741
STATEMENT OF THE CASE
Background
Mastitis is a disease which livestock animals such as
milked cattle and milked goats suffer from, and for dairy
farmers, it is a disease which reduces the amount of lactation or
which becomes a factor in remarkably lowering their
production efficiency and management efficiency since the
milk cannot be sold. Moreover, there are elements for causing
mastitis such as sanitary conditions (pathogen) of the
environment where the cattle are kept, feed, stress, and genetic
elements.
Spec. i-f 3.
The Specification discloses "a method for preventing and treating
mastitis in livestock animals to be milked such as dairy cattle." Id. at i-f 1.
Claims 3-5 are on appeal. 3 Claim 3, the sole independent claim on
appeal, is illustrative and reads as follows:
3. A method for preventing and treating mastitis for
livestock animals, comprising
feeding a rock powder which contains silicic acid and
aluminum oxide as active ingredients to a livestock animal, the
rock powder containing 60 wt% or more of silicic acid content
and 6 to 12 wt% of aluminum oxide content, and
chemically adsorbing nitrogen compounds including
ammonia nitrogen and nitrate nitrogen, which are produced in
3 Although the rejection at issue pertained to claims 1, 3, 4, 6, and 7,
Appellant filed an amendment in response to the Final Action, which was
entered, wherein claims 1 and 6-9 were cancelled, and claim 3 amended to
include the subject matter of claim 1. Ans. 2. This amendment obviated the
rejection of claim 9 under 35 U.S.C. § 112, first paragraph, and the rejection
under 35 U.S.C. § lOl(a). Id. In the current claims set, claim 5 depends
from claim 4, which depends from claim 3 and only claims 3-5 are pending.
Id.
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Application 14/168,741
a body of the livestock animal, by the aluminum oxide and the
silicic acid, to thereby suppress over-absorption of the nitrate
nitrogen through a digestive tract in the livestock animal,
wherein a ratio of a value obtained by dividing the silicic
acid content by molecular weight of the silicic acid to a value
obtained by dividing the aluminum oxide content by molecular
weight of the aluminum oxide is more than 10.
App. Br. 6 (Claims Appendix) (emphasis added to claim limitations at
issue).
Appellant seeks our review of the Examiner's rejection of claims 3-5
under 35 U.S.C. § 103(a) as obvious over Schall,4 Wei, 5 Segad, 6 and
Rodrigues. 7 Final Act 5. 8 Because Appellant has waived arguments based
on Segad (see Br. 5), the Examiner's findings on Schall, Wei, and Rodrigues
are dispositive for the rejection of all claims. We select claim 3 as
representative of the claims subject to this ground of rejection. 37 C.F.R.
§ 41.37(c)(l)(iv).
OBVIOUSNESS
The Examiner finds that Schall teaches "a method for improvement of
the usability of a mycotoxin contaminated feed by adding a layer [of] silicate
comprising a montmorillonite clay, especially Bentonite (powder), to the
4 US 2004/0028678 Al, published Feb. 12, 2004 ("Schall")
5 Long Wei, et al., Performance characteristics of EZhou bentonite of Hubei
province and its modification 6(4): RESEARCH & DEVELOPMENT, CHINA
FOUNDRY, 308-13 (2009) ("Wei").
6 M. Segad, et al., Ca/Na Mortmorillonite: Structure, Forces and Swelling
Properties, LANGMUIR 5782-90 (2010) ("Segad").
7 Rodrigues, et al., Mycotoxins in Cattle, THE DAIRY SITE 1-5 (2009)
("Rodrigues").
8 Examiner's Final Action, mailed July 16, 2015 ("Final Act.").
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Application 14/168,741
feed before or simultaneously with absorption by an animal." Final Act. 5.
The Examiner finds the silicate may be acid activated or not acid activated.
Ans. 5.
The Examiner finds Wei teaches that Bentonite is also known as
montomorillonite and "is a rock powder which contains silicic acid (Si02)
and aluminum oxide (Ab03) as active ingredients." Final Act. 5. The
Examiner further finds Wei teaches "Bentonite, wherein the silicic acid
(Si02) is about 74% and the aluminum oxide (Ab03) is about 13% ...
which would provide a molar ratio of ([Si02%]/[60 g/mol]/[Ab033%]/[102
g/mol]) of more than 1 O." Id.
The Examiner finds that Rodrigues teaches "mycotoxins in the silage
(e.g. grass or other green fodder) contributes to mastitis in cattle." Id. at 6.
The Examiner finds that
The method of treating mastitis comprising feeding the
rock powder which contains silicic acid (Si02) and aluminum
oxide (Ab03) as taught by Schall and Wei, as a whole, is within
the scope of the claimed invention so that the recited properties
of the composition as instantly claimed characterized in that the
composition chemically adsorbs nitrogen compounds including
ammonia, nitrogen and nitrate nitrogen, which are produced in
a body of the livestock animal, by the aluminum oxide and the
silicic acid, to thereby suppress over-absorption of the nitrate
nitrogen through a digestive tract in the livestock animal are
inherently met, because the same composition will feature the
same properties.
Id. at 5---6. Using this rationale, the Examiner concludes that the skilled
artisan
would have recognized that mycotoxins in silage causes
mastitis in livestock animals and would have been motivated to
feed a rock powder which contains silicic acid and aluminum,
i.e. Bentonite, to livestock animals in order to provide a method
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Application 14/168,741
for preventing and treating mastitis for livestock animals in
view of the teachings of Schall, Wei and Rodrigues, as a whole,
having a reasonable expectation of success.
Id. at 6.
Appellant contends that the claimed method is patentable over the
cited references because the references do not teach "chemically adsorbing
nitrogen compounds including ammonia nitrogen and nitrate nitrogen, which
are produced in a body of the livestock animal, by the aluminum oxide and
the silicic acid, to thereby suppress over-absorption of the nitrate nitrogen
through a digestive tract in the livestock animal." Appeal Br. 3-5.
As stated in Jn re Oetiker, 977F.2d1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting a prima
facie case of unpatentability ....
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
Here, we do not discern error in the Examiner's prima facie case for
obviousness, discussed below, and Appellant does not persuade us that a
preponderance of the evidence fails to support the Examiner's conclusion
that the claimed method of treating mastitis would have been obvious to an
ordinary artisan. Because Appellant has waived arguments based on Segad
(see Appeal Br. 9), the same issue is dispositive for both rejections.
Unless otherwise indicated herein, we adopt the Examiner's findings
of fact, reasoning on scope and content of the claims and prior art, and
conclusions set out in the Final Action and Answer. Final Act. 4--7, Ans. 3-
7.
We agree with the Examiner (see Final Act. 4--7, Ans. 3-7) that the
skilled artisan would have found it obvious to combine the teachings of
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Schall, Wei, Se gad, and Rodrigues to practice the claimed method of
treating mastitis. As found by the Examiner, Schall teaches using an acid-
activated layer silicate, including Montmorillonite clays like Bentonite, in
animal feed for adsorption of mycotoxins, and teaches specified amounts of
the silicate to use in feed. Schall Abstract, i-fi-125, 29, claims 1-9 and 20.
We further agree with the Examiner that the skilled artisan would have
learned from Wei that Bentonite contains silicic acid (Si02) and aluminum
oxide (Ab03) as active ingredients, including a ratio in use of about 74%
silicic acid to about 13% aluminum oxide. Wei 308-309. We agree with
the Examiner that the calculated molar ratio of this composition is
approximately 10. Final Act. 5. We further agree with the Examiner that
Rodrigues teaches that mycotoxins in the silage contribute to mastitis in
cattle. Rodrigues 1.
We further agree with the Examiner that the skilled artisan would
have had reason to include Bentonite in animal feed in a ratio of about 74%
silicic acid to about 13% aluminum oxide, for the purpose of preventing
mastitis caused by mycotoxins in silage, and would have applied those
teachings with a reasonable expectation of success. Final Act. 6. We
conclude the combined teachings of the references as a whole would have
suggested the claimed invention to the ordinarily skilled artisan. In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (The test for obviousness is what
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Application 14/168,741
the combined teachings of the references, as a whole would have suggested
to those of ordinary skill in the art).
We have considered Appellant's arguments, but do not find them
persuasive.
Appellant argues that the references do not disclose the invention,
stating that mastitis is prevented by "nitrogen compounds including
ammonia nitrogen and nitrate nitrogen, which are produced in a body of the
livestock animal, are chemically or electrically absorbed by the aluminum
oxide and the silicic acid, to thereby suppress over-absorption of the
nitrogen compounds through a digestive tract in the livestock animal." See,
e.g., Br. 3. Appellant also argues that combined references "do not disclose
or suggest 'chemically adsorbing nitrogen compounds including ammonia
nitrogen and nitrate nitrogen, which are produced in a body of the livestock
animal, by the aluminum oxide and the silicic acid, to thereby suppress over-
absorption of the nitrate nitrogen through a digestive tract in the livestock
animal."' Br. 4,
We are not persuaded. The Examiner has articulated fact-based
reasoning for a skilled artisan to have fed livestock animals a rock powder
containing silicic acid and aluminum (Bentonite) - to prevent mastitis in
those animals. Final Act. 6. Furthermore, the Examiner has stated an
inherency position, namely, that the end result of feeding such a rock
powder to such animals with mastitis caused by mycotoxins is necessarily
that the rock powder "chemically adsorbs nitrogen compounds including
ammonia, nitrogen and nitrate nitrogen, which are produced in a body of the
livestock animal, by the aluminum oxide and the silicic acid, to thereby
suppress over-absorption of the nitrate nitrogen through a digestive tract in
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the livestock animal." Id. at 5---6. "Under the principles of inherency, if the
prior art necessarily functions in accordance with, or includes, the claimed
limitations, it anticipates." In re Cruciferous Sprout Litig., 301 F.3d 1343,
1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted). The
Federal Circuit has further "recognized that inherency may supply a missing
claim limitation in an obviousness analysis." PAR Pharma., Inc. v. TWI
Pharmas., Inc., 773 F.3d 1186, 1194--95 (Fed. Cir. 2014). The "concept of
inherency" is, however, limited in respects when applied in an obviousness
analysis, "and is present only when the limitation at issue is the 'natural
result' of the combination of prior art elements." Id. at 1195; see also id. at
1195-96 (explaining that a limitation "necessarily must be present, or the
natural result of the combination of elements explicitly disclosed by the prior
art").
We find that the Examiner has established a rebuttable presumption,
based on scientific reasoning, that mycotoxin as described in Rodrigues
causes mastitis in animals, and that the sequela (mastitis) observed in
Rodrigues is caused by the same disease that causes mastitis in Schall. Final
Act. 3-5. The presumption further establishes that, when treated with the
same material, e.g., the rock powder composition of Wei, the mastitis caused
by mycotoxin should necessarily be resolved according to the claimed
method, which naturally occurs when an animal is fed the composition of the
claims and prior art. Id.
As explained above, the components of claim 3 and those taught in
Wei are the same, or substantially so. Under these circumstances, in
recognition of the fact that the Patent Office lacks testing facilities to prove
whether a particular property inheres to a known or obvious structure, it is
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appropriate for the Examiner to require Appellant to provide evidence that
the claimed properties are not present in the prior art formulations. In re
Best, 562 F.2d 1252, 1255 (CCPA 1977); see also Ex parte Skinner, 2
USPQ2d 1788, 1789 (BPAI 1986) (burden to disprove inherency shifted to
Applicants where the examiner has provided "some evidence or scientific
reasoning to establish the reasonableness of the examiner's belief that the
functional limitation is an inherent characteristic of the prior art.").
Appellant has not provided persuasive evidence or persuasively
argued why a rock powder composed of the same substances claimed would
not function as proposed by the Examiner. See In re Pearson, 494 F .2d
1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the
place of evidence."). To the extent that Appellant argues that the mastitis
caused by "mycotoxin containing naturally occurring fungi" (Br. 3) is a
different kind of mastitis that would not act in a similar manner to
chemically adsorption of nitrogen compounds produced in a body of the
livestock animal, Appellant has provided no evidence or persuasive
argument to support this theory. Id.
Appellant further argues that the cited references also do not disclose
or suggest "the superior effects that the claimed composition and method
step achieved." Br. 4. Appellant does not elaborate further on the purported
"superior effects," and we do not find any indication in the Specification of
an unexpected result that could constitute evidence of a secondary
consideration sufficient to outweigh the evidence supporting the prima facie
case for obviousness. Accordingly, we determine Appellant has not raised
an issue of secondary considerations in this appeal.
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Finally, Appellant argues that the cited references to not disclose
"wherein a ratio of a value obtained by dividing the silicic acid content by
molecular weight of the silicic acid to a value obtained by dividing the
aluminum oxide content by molecular weight of the aluminum oxide is more
than 10." Br. 4. Appellant argues:
Id.
it is unjust and unacceptable, and there has been no legitimate
basis, for the Office to arbitrarily round off the number
calculated from the cited reference to 10, and reject claim 3.
Also, even if the 9 .578 is close enough to 10, again, claim 3
recites "more than 10," which the cited references failed to
show.
The Examiner responds:
the rock powder as taught by Schall and Wei, as a whole, is a
montmorillonite clay, especially, bentonite, which contains
about 74% silicic acid and about 13% aluminum oxide and has
a three layered structure, which substantially overlaps with the
claimed ranges of a rock powder containing 60 wt% or more of
silicic acid content and 6 to 12 wt% of aluminum oxide content,
wherein the rock powder has a three layered structure, as
claimed. Therefore, the rock powder having a silicic acid and
aluminum oxide ratio of 9.578 as taught by Schall and Wei, as a
whole, is close enough to 10 that one of ordinary skill would
have expected the rock powder to be identical to the rock
powder as instantly claimed.
Ans. 5---6. Appellant does not respond to this argument, or provide evidence
showing a difference between the aluminum oxide ratio of9.578 and 10 as
claimed, or that "more than 1 O" is in any manner critical to the function of
the rock powder. Our reviewing court has held that "a prima facie case of
obviousness exists when the claimed range and the prior art range do not
overlap but are close enough such that one skilled in the art would have
expected them to have the same properties." In re Peterson, 315 F.3d 1325,
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1329 (Fed. Cir. 2003). Without evidence that the claimed composition
having "more than 1 O" reflects a difference in chemical properties or
function from 9 .578, we find Appellant has not overcome the prima facie
case for obviousness.
Conclusion of Law
For the reasons above, we affirm the rejection of claims 3-5 under 35
U.S.C. § 103(a) as obvious over Schall, Wei, Segad, and Rodrigues. Claims
4 and 5 have not been argued separately and therefore fall with claim 3. 37
C.F.R. § 41.37(c)(l)(iv).
SUMMARY
For the reasons discussed, we affirm the rejection of claims 3-5 under
35 U.S.C. § 103(a) as obvious over Schall, Wei, Segad, and Rodrigues.
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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