Ex Parte Jewell et alDownload PDFPatent Trial and Appeal BoardApr 11, 201312470708 (P.T.A.B. Apr. 11, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte DENNIS E. JEWELL and STEVEN C. ZICKER __________ Appeal 2011-002782 Application 12/470,708 Technology Center 1600 __________ Before FRANCISCO C. PRATS, JEFFREY N. FREDMAN, and STEPHEN WALSH, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a method to enhance disease resistance in an animal. The Examiner rejected the claims as anticipated and as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm and designate a portion of our affirmance as a New Ground of Rejection pursuant to our authority under 37 C.F.R. § 41.50(b). Appeal 2011-002782 Application 12/470,708 2 Statement of the Case Background “This invention relates to methods for enhancing disease resistance in animals. Specifically, this invention relates to methods comprising a combination of feeding a diet enriched in antioxidants and providing behavioral enrichment to enhance disease resistance in animals” (Spec. 1 ¶ 0001). The Claims Claims 1, 2, 5, 8, and 18 are on appeal. Claim 1 is representative and reads as follows: 1. A method to enhance disease resistance in an animal comprising: a) feeding said animal a diet enriched in antioxidants, wherein the diet comprises dl-alpha-lipoic acid; and b) providing behavioral enrichment to said animal; wherein the feeding and providing behavioral enrichment combination is effective to increase neutrophil phagocytosis and B cell percentages in said animal. The issues1 A. The Examiner rejected claims 1, 5, and 18 under 35 U.S.C. § 102(b) as anticipated by Zicker2 (Ans. 6) B. The Examiner rejected claims 1, 2, 5, 8, and 18 under 35 U.S.C. § 103(a) as obvious over Reynolds,3 Zicker and “About.com”4 (Ans. 7-9). 1 The double patenting rejection was withdrawn as moot in view of the abandonment of US 11/766,966 (see Ans. 4). 2 Zicker et al., US 2002/0115710 A1, published Aug. 22, 2002. 3 Reynolds et al., US 2005/0249787 A1, published Nov. 10, 2005. 4 “About.com”, http://celiacdisease.about.comlod/celiacdisease Appeal 2011-002782 Application 12/470,708 3 C. The Examiner rejected claims 1, 2, 5, 8, and 18 under 35 U.S.C. § 103(a) as obvious over Zicker and Reynolds (Ans. 9-11). A. 35 U.S.C. § 102(b) over Zicker The Examiner finds that “Zicker teaches that a companion pet (animal) was administered 1500 ppm of vitamin E, vitamin C, dl-alpha lipoic acid and Vitamin C (ascorbic acid), see paragraphs 6, 15, 44, 62, the claims and abstract. Note 1000 ppm of vitamin E was used and 150 ppm of dl-alpha lipoic acid was used, see paragraph 15 and 44” (Ans. 6). The Examiner finds it inherent that “the method of Zicker will inherently enhance disease resistance in animals since Zicker does teach administering the claimed composition to an animal and thus inherently the claimed method will be performed since the same composition as claimed is being administered to an animal” (Ans. 6). Appellants “respectfully disagree with the Examiner that feeding the composition of the cited reference will increase neutrophil phagocytosis and B cell percentages as in the diet of the present application as the present invention involves an additional element, i.e., providing behavioral enrichment, which is not disclosed in Zicker” (App. Br. 8). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that Zicker anticipates the claims? Findings of Fact 1. The Specification teaches that “behavioral enrichment” includes, but is not limited to, subjecting an animal to one or more series of activities that glossary/g/PPM.htm ?p= 1, accessed Jul. 2, 2010. Appeal 2011-002782 Application 12/470,708 4 can provide mental and/or physical stimulation of the animal that is beneficial to the well being of the animal, mentally or physically. Such activities may include exercise of any type. (e.g. running or playing with kennel mates or human companions, hand walking by leash for a period of time, e.g., 30 minutes or longer several times a week). Appropriate amounts and types of exercise may be utilized such that behavioral enrichment is provided. (Spec. 7 ¶ 0041). 2. The Specification teaches that the term “behavioral enrichment” also encompasses environmental enrichment (e.g., providing the animal with new toys which engage the animal’s mental faculties) as well as a programs or activities that provide cognitive enrichment. Cognitive enrichment for an animal may include, but is not limited to, e.g., oddity determination learning problems or games of cognition. Such games may be played using food as a reward. Such games require successful cognitive activity to achieve the reward. (Spec 7 ¶ 0042). 3. The Specification teaches that the “method comprises a diet that comprises dl-alpha-lipoic acid at about 125 ppm or more” (Spec. 5 ¶ 0016). 4. Zicker teaches “a companion aged pet diet meeting ordinary nutritional requirements of the aged pet and further comprising an antioxidant selected from the group consisting of Vitamin E, vitamin C, alpha-lipoic acid, 1-camitine and any mixture thereof in quantities sufficient to inhibit the deterioration of the mental capacity of an aged companion pet” (Zicker 1 ¶ 0006). 5. Zicker teaches that the “quantity of alpha-lipoic acid can vary from at least about 25 ppm, desirably at least about 50 ppm, more desirably Appeal 2011-002782 Application 12/470,708 5 about 100 ppm. Maximum quantities can vary from about 100 ppm to 600 ppm or to an amount which remains non toxic to the pet. A preferred range is from about 100 ppm to about 200 ppm” (Zicker 2 ¶ 0015). 6. Zicker teaches, in Example 1, that “the control diet contained 59 ppm Vitamin E and <32 ppm Vitamin C. The test diet had 900 ppm Vitamin E and 121 ppm Vitamin C, 260 ppm 1-carnitine and 135 ppm alpha lipoic acid” (Zicker 2 ¶ 0036). 7. Zicker teaches, in Example 1, that “[t]welve-aged beagle dogs were given a battery of baseline problem solving tasks prior to placement into either a control or enriched test diet group. The aged animals were equally matched” (Zicker 2 ¶ 0037). 8. Zicker teaches that “[a]pproximately 1 month after starting the diet, the first problem-solving task given to dogs was a landmark discrimination learning task, which is a test of spatial attention” (Zicker 2 ¶ 0037). 9. Zicker teaches that “[d]ogs in the control and enriched test diet group, after completing landmark discrimination learning, have been tested on an oddity task” (Zicker 3 ¶ 0040). 10. Zicker found that on the landmark discrimination learning task, “[a]nimals on the enriched diet acquired the task with fewer errors than did the animals on the control diet” (Zicker 3 ¶ 0039). Zicker also found that on the oddity task “[d]ogs on the enriched test diet learned this task with significantly fewer errors than dogs fed the control diet” (Zicker 3 ¶ 0040). Appeal 2011-002782 Application 12/470,708 6 Principles of Law “A single prior art reference that discloses, either expressly or inherently, each limitation of a claim invalidates that claim by anticipation.” Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005). In Cruciferous Sprout, the court stated “[i]t is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it.” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1349 (Fed. Cir. 2002). “It matters not that those of ordinary skill heretofore may not have recognized these inherent characteristics.” Id. at 1350. Analysis Claim Interpretation Claim interpretation is at the heart of patent examination because before a claim is properly interpreted, its scope cannot be compared to the prior art. In this case, Appellants “disagree with the Examiner that feeding the composition of the cited reference will increase neutrophil phagocytosis and B cell percentages as in the diet of the present application as the present invention involves an additional element, i.e., providing behavioral enrichment, which is not disclosed in Zicker” (App. Br. 8). During prosecution, claim terms are given their broadest reasonable interpretation as they would be understood by persons of ordinary skill in the art in the light of the Specification. Therefore, we first turn to the Specification to determine whether the meaning of the phrase “behavioral enrichment” can be discerned. Appeal 2011-002782 Application 12/470,708 7 The Specification teaches that the term “behavioral enrichment” also encompasses environmental enrichment (e.g., providing the animal with new toys which engage the animal’s mental faculties) as well as a programs or activities that provide cognitive enrichment. Cognitive enrichment for an animal may include, but is not limited to, e.g., oddity determination learning problems or games of cognition. Such games may be played using food as a reward. Such games require successful cognitive activity to achieve the reward. (Spec 7 ¶ 0042; FF 2). Appellants do not identify any portion of the Specification which imposes any minimum level of frequency that is required for “behavioral enrichment” to “increase neutrophil phagocytosis and B cell percentages” as required by claim 1. Nor do Appellants identify any specific level of increase which is required. We therefore conclude that any combination of feeding an animal alpha-lipoic acid combined with behavioral enrichment such as oddity determination learning problems or cognition games would reasonably result in an inherent increase in neutrophil phagocytosis and B cell percentages. Prima facie case Zicker teaches the manipulative steps of claim 1 in Example 1. That is, in Example 1, Zicker teaches feeding dogs a test diet, where “the test diet had 900 ppm Vitamin E and 121 ppm Vitamin C, 260 ppm 1-carnitine and 135 ppm alpha lipoic acid” (Zicker 2 ¶ 0036; FF 6). Zicker’s feeding of 135 ppm of alpha lipoic acid falls within the about 125 ppm range encompassed by claims 1, 5, and 18. Appeal 2011-002782 Application 12/470,708 8 While the Examiner does not specifically point out Example 1 for behavioral enrichment, Example 1 of Zicker teaches behavioral enrichment, specifically that “[a]pproximately 1 month after starting the diet, the first problem-solving task given to dogs was a landmark discrimination learning task, which is a test of spatial attention” (Zicker 2 ¶ 0037; FF 8). Zicker also teaches that “[d]ogs in the control and enriched test diet group, after completing landmark discrimination learning, have been tested on an oddity task” (Zicker 3 ¶ 0040; FF 9). Thus, Example 1 of Zicker reasonably teaches both manipulative steps of claims 1 and 18, where the animals are fed 135 ppm alpha-lipoic acid and the animals are provided with both a landmark discrimination learning task and an oddity task (FF 6, 8, 9). These two tasks are reasonably interpreted as “behavioral enrichment” in light of the definition in the Specification (FF 2). Zicker demonstrates that the animals, after one month, have improved cognition (FF 10), though Zicker is silent with regard to their level of neutrophil phagocytosis and B cell percentages. We conclude that Zicker’s treatment would have reasonably had the inherent effect of increasing the level of neutrophil phagocytosis and B cell percentages in the treated animals in Example 1. As noted in Best, “[w]here, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. . . . Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness' under 35 U.S.C. § 103, jointly or alternatively, the Appeal 2011-002782 Application 12/470,708 9 burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products” In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellants have provided no evidence that Zicker’s treatment would not have inherently yielded the claimed result. Because our reasoning differs from that of the Examiner, and because we have relied upon portions of Zicker which differ from those identified by the Examiner, we designate our affirmance of this anticipation rejection a New Ground of Rejection to provide Appellants with a full and fair opportunity to respond to the thrust of the rejection. Conclusion of Law The evidence of record support the Examiner’s conclusion that Zicker anticipates the claims. B. & C. 35 U.S.C. § 103(a) over Zicker, Reynolds, and “About.com” We will consider these rejections together, since they both rely upon Zicker and Reynolds. The Examiner finds that “Reynolds teaches that dogs were administered 400 mg of vitamin E per day and walked (exercised) for 2 hours twice a week” (Ans. 7). The Examiner finds that in “the event it is seen that ‘dog walking wheel’ in paragraph 57, does not mean that the dogs were hand walked by the wheel, then it clearly would have been obvious to hand walk the dogs instead of by a wheel since dogs enjoy being walked by hand by their masters, the humans” (Ans. 8). The Examiner finds that Zicker teaches alpha lipoic acid as a food additive (Ans. 9). Appeal 2011-002782 Application 12/470,708 10 The Examiner finds it obvious to “use another well known antioxidant in addition to the Vitamin E such as dl-alpha lipoic acid in an effort to optimize the desired results of the anti oxidative features of the compositions in Reynolds” (Ans. 9). The Examiner also finds it obvious to “exercise the animal by walking it for at least 30 minutes twice a week since animals such as dogs are routinely walked twice a day as normal care of a dog” (Ans. 11). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that it would have been obvious to combine the alpha lipoic animal feed of Zicker with walking the animal as taught by Reynolds in order to render the claims obvious? Findings of Fact 11. Reynolds teaches “methods for attenuating inflammation, enhancing immunity, enhancing longevity, and combinations thereof, comprising administering to a companion animal a composition comprising an effective amount of astaxanthin” (Reynolds 2 ¶ 0018). 12. In Example 1 of Reynolds, “dogs were divided into three groups of 12 dogs . . . A treatment was randomly assigned to each group by drawing from a hat. Group ‘A’ was assigned about 400 mg Vitamin E/day, group ‘B’ was assigned about 2 mg Astaxanthin/day and group ‘C’ was assigned about 500mg maltodextrin as a placebo” (Reynolds 5 ¶ 0057). 13. Example 1 of Reynolds teaches that the dogs “were treated for six weeks before the onset of testing. They were also trained lightly for two sessions per week during this time period. Training sessions consisted of walking at 14 kilometers per hour for 2 hours in a 40-foot diameter circle tethered to a dog-walking wheel” (Reynolds 5 ¶ 0057). Appeal 2011-002782 Application 12/470,708 11 Principles of Law “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’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 Reynolds teaches feeding an animal a diet enriched in antioxidants, specifically either vitamin E or Astaxanthin (FF 12) in order to improve immunity (FF 11). Reynolds also teaches walking the animals at least 30 minutes per week (FF 13). Reynolds does not teach feeding alpha-lipoic acid to the dogs, nor does Reynolds expressly teach hand walking. In Example 1, Zicker teaches feeding dogs a test diet, where “the test diet had 900 ppm Vitamin E and 121 ppm Vitamin C, 260 ppm 1-carnitine and 135 ppm alpha lipoic acid” (Zicker 2 ¶ 0036; FF 6). Zicker’s feeding of 135 ppm of alpha lipoic acid falls within the about 125 ppm range required by claims 1, 5, and 18. Example 1 of Zicker also teaches behavioral enrichment, specifically that “[a]pproximately 1 month after starting the diet, the first problem- solving task given to dogs was a landmark discrimination learning task, which is a test of spatial attention” (Zicker 2 ¶ 0037; FF 8). Zicker also teaches that “[d]ogs in the control and enriched test diet group, after completing landmark discrimination learning, have been tested on an oddity task” (Zicker 3 ¶ 0040; FF 9). Appeal 2011-002782 Application 12/470,708 12 Applying the KSR standard of obviousness to the findings of fact, we conclude that the person of ordinary skill would have reasonably combined the feeding protocols of Zicker and Reynolds to provide alpha-lipoic acid to the dogs, since Zicker teaches that alpha lipoic acid improves the dogs’ mental acuity (FF 10). Further, we agree with the Examiner that “it clearly would have been obvious to hand walk the dogs instead of by a wheel since dogs enjoy being walked by hand by their masters, the humans” (Ans. 8). Such a combination is merely a “predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417. Appellants contend that neither Reynolds or Zicker teach a method “wherein the feeding and providing behavioral enrichment combination is effective to increase neutrophil phagocytosis and B cell percentages in the animal.” (App. Br. 10). We are not persuaded. The combination of Zicker and Reynolds reasonably teaches and suggests feeding dogs alpha lipoic acid and providing them with behavioral enrichments including cognitive tests (FF 9) as well as walking more than 30 minutes twice a week (FF 13). “Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness' under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products” In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellants have provided no evidence that the combined Reynolds and Zicker treatment would not have inherently yielded the neutrophil phagocytosis and B cell percentage result. Appeal 2011-002782 Application 12/470,708 13 Appellants contend that neither Zicker nor Reynolds “disclose or suggest that the composition can be used to enhance disease resistance nor does Zicker disclose or suggest a method or providing behavioral enrichment resulting in increased neutrophil phagocytosis and B cell percentages” (App. Br. 11). We are not persuaded. “It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it.” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1349 (Fed. Cir. 2002). “It matters not that those of ordinary skill heretofore may not have recognized these inherent characteristics.” Id. at 1350. Moreover, the fact that the prior art’s reasons for performing the claimed steps might be different than Appellants’ does not demonstrate that performing the claimed would have been unobvious. See KSR, 550 U.S. at 419 (“In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103.”). Here, there is sufficient evidence in Example 1 of Zicker and Example 1 of Reynolds (FF 6-10, 12, 13) to demonstrate that the method would have been obvious and would reasonably have inherently shared the properties required by claims 1 and 18, thereby shifting the burden to Appellants to rebut the inherency position. Appellants have provided no evidence which would rebut the inherency position. Appeal 2011-002782 Application 12/470,708 14 Conclusion of Law The evidence of record supports the Examiner’s conclusion that it would have been obvious to combine the alpha lipoic animal feed of Zicker with walking the animal as taught by Reynolds in order to render the claims obvious. SUMMARY In summary, we affirm the rejection of claims 1, 5, and 18 under 35 U.S.C. § 102(b) as anticipated by Zicker. We affirm the rejection of claims 1, 2, 5, 8, and 18 under 35 U.S.C. § 103(a) as obvious over Reynolds, Zicker and “About.com”. We affirm the rejection of claims 1, 2, 5, 8, and 18 under 35 U.S.C. § 103(a) as obvious over Zicker and Reynolds. Because our reasoning and evidence differs from that of the Examiner, we designate the anticipation rejection over Zicker as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2011-002782 Application 12/470,708 15 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . AFFIRMED; § 41.50(b) lp Copy with citationCopy as parenthetical citation