Ex Parte Johnson

Patent Trial and Appeal Board

Sep 23, 2016

13587677 (P.T.A.B. Sep. 23, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/587,677 08/16/2012 Edgar W. Johnson BTER D999D1 1959
1688 7590 09/26/2016
Polster, Lieder, Woodruff & Lucchesi, L.C.
12412 Powerscourt Dr. Suite 200
St. Louis, MO 63131-3615
EXAMINER
KOSAR, AARON J
ART UNIT PAPER NUMBER
1657
MAIL DATE DELIVERY MODE
09/26/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte EDGAR W. JOHNSON and LARRY M. JAYROE.1
__________

Appeal 2014-009998
Application 13/587,677
Technology Center 1600
__________

Before FRANCISCO C. PRATS, JOHN G. NEW, and
JOHN E. SCHNEIDER, Administrative Patent Judges.

SCHNEIDER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method of administering boron containing compounds to prevent
osteochondritis which have been rejected obvious. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The present invention is directed to administering boron containing
compounds to an animal to treat or prevent osteochondrosis. Spec. ¶ 10. In
an alternative embodiment, the administration of boron allows for the

1 Appellants identify the Real Party in Interest as B-Tera Corp. Br. 1.
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reduction of phosphorous in animal feeds by decreasing the amount of
phosphorous excreted by the animal. Spec. ¶¶ 11 and 12.
Claims 1–12 and 18–20 are on appeal. Claims 1 and 10 are
illustrative and read as follows:
1. A method of preventing or treating osteochondrosis
comprising administering at least about 25 ppm of
supplemental elemental boron as a boron containing compound
in a carrier to a mammal in need of such treatment.

10. A method of increasing the efficiency of absorption of
phosphorus in an animal or of decreasing the amount of
phosphorus excreted by an animal, comprising administering
about 25 ppm to about 50 ppm supplemental boron to said
animal.

Appeal Br. 25 and 27 (Claims Appendix).

The claims stand rejected as follows:
Claims 1–9 and 18–20 stand rejected under 35 U.S.C. § 112, first
paragraph as not enabled.
Claims 1, 5–9 and 18–20 stand rejected under 35 U.S.C. § 112,
second paragraph as indefinite.
Claims 1-12 and 18–20 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Rigby-Burdette.2
Claims 1, 2, 4-8, 10, 11 and 18-20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Gribbins.3

2 C. E. Rigby-Burdette, Alfalfa Pellets vs. Alfalfa Hay vs. Alfalfa Sprouts,
REOCITIES (November 1997) (“Rigby-Burdette”).
3 Gribbins, US 2,687,354, issued Aug. 24, 1954 (“Gribbins”).
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Claims 1–12 and 18–20 stand rejected under 35 U.S.C. § 102(a) as
anticipated by Underwood4 or under 35 U.S.C. § 103(a) as obvious over
Underwood.
Claims 1–12 and 18–20 stand rejected under 35 U.S.C. § 102(a) as
anticipated by Arhola5 or under 35 U.S.C. § 103(a) as obvious over Arhola
either alone or in combination with combined with Underwood.
Claims 1–21 and 18–20 stand rejected under 35 U.S.C. § 102(a) as
anticipated by Beres6 or under 35 U.S.C. § 103(a) as obvious over Beres
alone or in combination with combined with Underwood.
Claims 1–12 and 18–20 stand rejected under 35 U.S.C. § 102(a) as
anticipated by Kurtoglu7 or under 35 U.S.C. § 103(a) as obvious over
Kurtoglu.
Claims 1–12 and 18–20 stand rejected under 35 U.S.C. § 103(a) as
obvious over Armstrong8 in view of Underwood.

4 E.J. Underwood and N.F. Suttle, Occasionally Beneficial Elements (Boron,
Chromium, Lithium, Molybdenum, Nickel, Silicon, Tin, Vanadium) MINERAL
NUTRITION OF LIVESTOCK 513–542 (1999) (“Underwood”).
5 Arhola et al., EP 0479287 A1, published Aug. 5, 1992 (“Arhola”).
6 Beres et al., US 5,312,629, issued May 17, 1994 (“Beres”).
7 Kurtoglu et al., Effects of boron supplementation of adequate and
inadequate vitamin D3-containing diet on performance and serum
biochemical characters of broiler chickens, 71 RESEARCH IN VETERINARY
SCI. 183–187 (2001) (“Kurtoglu”).
8 T.A. Armstrong and J.W. Spears, Effect of Dietary boron on growth
performance, calcium and phosphorous metabolism, and bone mechanical
properties in growing barrows, 79 AMER. SOC. ANIMAL SCI. 3120–27 (2001)
(“Armstrong”).
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ENABLEMENT
Issue
In rejecting claims 1–9 and 18–20 for lack of enablement, the
Examiner finds that the Specification does not enable a person skilled in the
art to prevent osteochondrosis. Final Act.9 4. The Examiner finds that the
term “prevent”
is an absolute definition which means to stop from occurring and,
thus, requires a higher standard for enablement than does
“therapeutic” or “treat”, especially since it is notoriously well
accepted in the medical art that the vast majority of
afflictions/disorders suffered by mankind cannot be totally
prevented with current therapies (other than certain vaccination
regimes) – including preventing such disorders as
osteochondrosis, which is clearly not recognized in the medical
art as being a totally preventable condition.

Id. at 4–5.
Appellants contend that the claims are enabled. Appeal Br. 5.
Appellants point to several examples in the Specification where
osteochondrosis is prevented in pigs. Id. Appellants argue that by reading
the Specification “[o]ne skilled in the art can readily conclude the boron
supplementation prevented osteochondrosis.” Id.
The issue with respect to this rejection is whether the Examiner has
made a prima facie case that the Specification’s disclosure of methods for

9 Office Action mailed Oct. 11, 2013 (“Final Act.”).
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preventing osteochondrosis is insufficient to enable claims direct to the use
of boron to prevent osteochondrosis.

Findings of Fact
FF1. The Specification discloses dosing mammals with from 25 to 50
ppm supplemental boron to treat and prevent osteochondrosis. Spec. ¶ 10.
FF2. In Example 4 of the Specification, pigs were administered 3-
nitrophenylboronic acid (“3-NPB”) to induce osteochondrosis. Some of the
pigs were given 50 ppm supplemental boron while others received no
supplemental boron. Spec. ¶ 98.
FF3. After 10 days of feeding, the pigs who did not received
supplemental boron exhibited clinical manifestations of osteochondrosis
while only one of five pigs fed supplemental boron exhibited signs of
osteochondrosis. Spec. ¶ 99.
FF4. In example 5 of the Specification it teaches that at
[a]n Iowa farm treated a group of about 100 pigs with 50 ppm
boron as boric acid. None of these pigs developed any signs of
lameness or unsoundness. The farmer reported that these pigs
are the most sound he has raised. The estimated previous
lameness/unsoundness rate was about 25 to 30%, and zero in the
test group. The pigs demonstrated excellent growth rate. The
absence of lameness and hock swelling was observed. Two pigs
with hock swelling were euthanised from among the younger and
older pigs not treated with boric acid. The younger pig of about
50 pounds body weight showed evidence of early OC changes in
the hock. An older pig of about 250 pounds body weight with
severe lameness in the right hock was euthanised. Severe
advanced OCD was observed in the hock, and growth plate
abnormalities were observed when the bones were sectioned.
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Culture of the hock joints was negative, ruling out bacterial
infection and indicating that OC is the likely cause of lameness.

Spec. ¶ 110.

Principles of Law

During examination the PTO must interpret terms in a claim using
the “broadest reasonable meaning of the words in their ordinary usage as
they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that
may be afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed, Cir. 1997).
The Examiner must therefore “determine[] the scope of [the] claims
in patent applications not solely on the basis of the claim language, but
upon giving claims their broadest reasonable construction ‘in light of the
specification as it would be interpreted by one of ordinary skill in the art.’”
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (emphasis
added) (quoting In re Am. Acad. Of Science Tech Center, 367 F.3d 1359,
1364 (Fed. Cir. 2004).
Similarly, in the context of enablement, in In re Cortright, 165 F.3d
1353, 1359 (Fed. Cir. 1999), the court concluded that the claim language
“restoring hair growth” was enabled by a specification that disclosed
procedures yielding “‘only three times as much hair growth as two months
earlier,’ ‘filling-in some,’ and ‘fuzz.’” Id. At 1357–58. In doing so, the
court explicitly rejected this Board’s broad literal interpretation of
‘restoring hair growth” as meaning “returning the user’s hair to its original
state.” Id. At 1359. Rather, the court concluded that when the claims at
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issue were interpreted in a manner consistent with the specification and
prior art, the language meant simply increasing the amount of hair growing
on the scalp. Id. Given that interpretation, and the Specification’s
disclosure of formulations, dosages, and procedures adequate to produce
the result, the court concluded that the Specification had provided an
enabling disclosure of the claim under consideration. See id.
Analysis
We agree with the Appellants that, when the claims are properly
interpreted consistent with the Specification, the Examiner has not made a
prima facie case of lack of enablement.
We note that an ordinary artisan might possibly define “prevent” as
requiring the supplement to stop osteochondrosis in every instance as the
Examiner urges. The Examiner, however, has offered no persuasive
evidence that a person of ordinary skill in the art would interpret the claims
in the asserted manner.
Moreover, while the claims must be given their broadest reasonable
interpretation, that interpretation must be consistent with the Specification’s
disclosure of the invention. In re Morris, 127 F.3d at 1054; Phillips v. AWH
Corp., 415 F3d at 1316.
In the instant case, the Specification discloses in Example 3 that for
four of five pigs, administration of supplemental boron completely stopped
the development of osteochondrosis when the pigs were administered 3-
NPB. FF1–3. In example 5, only two out of 100 pigs developed
osteochondrosis when administered supplemental boron when the expected
number of pigs developing osteochondrosis was 25 to 30. FF4. Thus the
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administration of boron prevented the development of osteochondrosis in a
majority of the animals given supplemental boron.
The Examiner also argues that the data showing prevention of
osteochondrosis is limited to pigs and does not show prevention in all
mammals as recited in the claims. Ans. 24. The Examiner concludes that
the claims are not enabled for the full scope of the claims. Id. We are
unpersuaded. As the Specification points out
[i]t is generally considered that the pig is the archetypic
model species for osteochondrosis in mammals (see Reiland S.
Osteochondrosis in the pig. Acta Radiol 1-118, 1975) The
cascade of pathophysiologic events that culminate in clinical
manifestations of osteochondrosis (OCD) in the pig are generally
believed to be those events that occur in the other mammalian
species that develop OCD, particularly the horse, dog, ruminants
and humans. Since the pig is the model for OCD in other
mammals and it has been demonstrated that boron is useful for
prevention and treatment of OCD in the pig, it logically follows
that boron should have a similar effect in other mammals and the
effect should be mediated by a similar biochemical mechanism.

Spec. ¶ 102. The Examiner has offered no persuasive evidence to contradict
this teaching.
Conclusion of Law
We conclude that the Examiner has failed to establish a prima facie
case that claims 1–9 and 18–20 are not enabled as required by 35 U.S.C.
§ 112, first paragraph.

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INDEFINITENESS
Issue
In rejecting claims 1, 5–9 and 18–20 as indefinite under 35 U.S.C.
§ 112, second paragraph, the Examiner finds that the terms “‘at least about
25 ppm of supplemental boron’, ‘at least about 25 ppm to about 50 ppm’,
and ‘supplement . . . in an amount of about 25 ppm to about 50 ppm”, are
unclear in that the terms and do not recite how much boron in the boron-
and-carrier material is required to treat or prevent osteochondrosis. Final
Act. 6. The Examiner also finds that the claims are unclear
because as disclosed the supplemental material in the amounts
thereof (“at least about 25 ppm of supplemental boron”, “at least
about 25 ppm to about 50 ppm”, and “supplement . . . in an
amount of about 25 ppm to about 50 ppm”) is a material-and-
boron amount thereof dependent upon a boron-variable object
(the “carrier” or “feed material”), such that the objective standard
by which a therapeutically effective amount for treating
osteochondrosis for each animal (and the objective amount for
all mammals) remains unclear.
Id.
Appellants contend that “[o]ne skilled in the art reading the claim and
the specification, particularly ¶¶[0010] for example, would understand the
supplemental boron is provided as about 25 ppm to about 50 ppm elemental
boron.” Appeal Br. 6–7.
The issue presented is whether the Examiner has established a prima
facie case that the claims are indefinite under 35 U.S.C. § 112, second
paragraph.

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Principles of Law
“[A] patent is invalid for indefiniteness if its claims, read in light of
the specification delineating the patent, and the prosecution history, fail to
inform, with reasonable certainty, those skilled in the art about the scope of
the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120,
2124 (2014).
[I]t is the language itself of the claims which must
particularly point out and distinctly claim the subject matter
which the applicant regards as his invention, without limitations
imported from the specification. . . . . Limitations in the
specification not included in the claims may not be relied upon
to impart patentability to an otherwise unpatentable claim.

In re Lundberg, 244 F.2d 543, 548 (CCPA 1957).

Analysis
We agree with the Examiner that the claims are indefinite. While the
claims use the term 25 and 50 ppm, the claims and Specification do not
make clear what the boron content is being compared with. Ans. 24.
Appellants argue that the Specification, particularly paragraph 10,
provides one skilled in the art with guidance as to what is meant by ppm.
Reply Br. 6. We are unpersuaded. In paragraph 10 of the Specification it
suggests that ppm refers to parts per million of the base animal feed. Spec.
¶ 10. The claims, however, do not refer to the base animal feed. Rather, the
claims refer to both a boron containing compound and a carrier. Appeal Br.
25 (Claims Appendix). It is unclear whether ppm refers to the boron
compound, the carrier or the base feed. “[I]f a claim is amenable to two or
more plausible claim constructions, the USPTO is justified in requiring the
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applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite.” Ex parte Miyazaki, 2008 WL 5105055, at *5
(BPAI 2008) (precedential).
Conclusion of Law
We conclude that the Examiner has established by a preponderance of
the evidence that claims 1, 5–9 and 18–20 are indefinite under 35 U.S.C.
§ 112, second paragraph.
CLAIM CONSTRUCTION
Our analysis of the prior art rejections relies, in part, on the
construction of two terms – “supplemental elemental boron” and “at least
about.” In construing these terms we apply
to the verbiage of the proposed claims the broadest reasonable
meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that
may be afforded by the written description contained in the
applicant’s specification.

In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Supplemental Elemental Boron
The present specification teaches that “[t]he animal feeds of the
present invention contain supplemental boron in addition to the boron
naturally present in the animal feed from plant material.” Spec. ¶ 10. The
Specification goes on to teach that “the term supplemental boron as used
herein refers to exogenously added boron that supplements the basal levels
of boron already present in commonly used animal feeds.” Spec. ¶ 34.
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Relying on these definitions, Appellants argue that certain references do not
teach the administration of supplemental boron. Appeal Br. 9–11.
Appellants argue that the boron present is limited to the basal levels found in
the standard feeds. Id.
The Examiner discounts the term “supplemental elemental boron” as
the feeds recited in the references contain boron within the recited ranges
and would have intrinsically provided the claimed effects. Ans. 25. The
Examiner goes on to argue that the claims do not require any further
chemical structure to which the boron is supplemented and the claims are
inclusive of plant material which can also be the basal feed material. Id.
While, as discussed above, we agree with the Examiner that the
claims do not recite what the boron content of the supplement is compared
to, we conclude that the Specification makes clear that the boron containing
material is a supplement added to the base feed and does not include the
base feed material.
At Least About 25 ppm
Appellants contend that the term “about” is similar to the term
“approximately” and is a term of approximation that provides some
definitional leeway. Appeal Br. 7. Appellants go on to argue that the term
“at least” is not a term of approximation but defines an endpoint of a
limitation. Id. Using these definitions, Appellants argue that the term “at
least about” does not extend down to values of 20 ppm or less. See, e.g.,
Appeal Br. 13–14.
The Examiner takes the position that the term “at least about 25 ppm”
extends down as low as 19 ppm. Final Act. 15. In support, the Examiner
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notes that the Specification teaches that the boron supplement can be
effective at levels as low as 1 ppm. Ans. 28.
We agree with the Examiner’s interpretation. While the term “at
least” by itself is not a term of approximation, the use of the term “about”
introduces an element of approximation and extends that scope of the term.
When read in light of the Specification and the prior art, we find that the
Examiner’s interpretation to be reasonable. Modine Manufacturing Co. v.
U.S. ITC, 75 F.3d 1545, 1554 (Fed. Cir. 1996):
Such broadening usages as “about” must be given reasonable
scope; they must be viewed by the decisionmaker as they would
be understood by persons experienced in the field of the
invention. Although it is rarely feasible to attach a precise limit
to “about,” the usage can usually be understood in light of the
technology embodied in the invention.
THE RIGBY-BRUDETTE REFERENCE
Issue
In rejecting claims 1–12 and 18–20 as anticipated by Rigby-Burdette
the Examiner finds that Rigby-Burdette teaches
providing animal feed or making tea (broadly, providing water;
providing a carrier; adding to an animal feed, oral carrier, or
drinking water) containing alfalfa (broadly interpreted as a
boron and carrier containing material having about 37 ppm (at
least about 25, about 25-50 ppm) boron; plant material;
(in)organic B-containing material; an amount effective to treat
osteochondrosis and increase P absorption/decrease P
excretion) (see entire document, e.g. “other forms” at page 2)
and that alfalfa is useful as livestock (broadly interpreted as
inclusive of pigs, horses, mules, donkeys, cattle, sheep, goats,
and llamas) and pet feed including for rabbits, guinea pigs
(mammals) or in salads (for mammals, humans) (e.g. page 1 at
ln 1-2 and at “different kinds of alfalfa”). Accordingly, because
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the reference teaches providing the same boron-containing
compounds in the same amount to the same animals (mammals,
humans, including asymptomatic or prediagnosed animals),
then although the reference does not expressly recite the
intended effects of the administering, the instantly claimed
effects would have been inherent to the prior art administration,
especially in the absence of objective evidence to the contrary.

Final Act. 8–9.
Appellants contend that Rigby-Burdette does not disclose a method
for treating or preventing osteochondrosis. Appeal Br. 9. Appellants argue
that Rigby-Burdette discloses iguana food and not food for a mammal. Id.
Appellants go on to argue that reference does not teach supplementation of
the basal amounts of boron found in the feed with exogenous boron. Id.
With respect to claim 10, Appellants argue that Rigby-Burdette does
not disclose increasing the efficiency of absorption of phosphorous or
decreasing the excretion of phosphorous by administering about 25 ppm to
about 50 ppm of supplemental boron. Appeal Br. 10.
The issue with respect to this rejection is whether the Examiner has
established by a preponderance of the evidence that claims 1–10 and 18–20
are anticipated by Rigby-Burdette.
Findings of Fact
FF5. Rigby-Burdette teaches inclusion of alfalfa into a salad feed for
iguanas. Rigby-Burdette 1.
FF6. The alfalfa is available in several forms including alfalfa hay,
alfalfa pellets or alfalfa sprouts. Id.
FF7. Alfalfa pellets are also known as rabbit pellets, guinea pig
pellets, ferret pellets and chinchilla pellets. Id.
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FF8. The Specification teaches that alfalfa contains 37 ppm boron.
Spec. ¶ 34.
Principles of Law
“Anticipation requires that all of the claim elements and their
limitations are shown in a single prior art reference.” In re Skvorecz, 580
F.3d 1262, 1266 (Fed. Cir. 2009).
Analysis
We agree with Appellants that Rigby-Burdette does not anticipate the
pending claims. While Rigby-Burette teaches the use of alfalfa as a
supplement for salad fed iguanas and that alfalfa can be fed to mammals, the
Examiner has pointed to nothing in Rigby-Burdette that alfalfa is fed as a
supplement to provide a supplemental amount of boron to mammals. Thus
Rigby-Burdette does not teach all of the limitations of the claims.
Conclusion of Law
We conclude that the Examiner has failed to establish by a
preponderance of the evidence that the pending claims are anticipated by
Rigby-Burdette under 35 U.S.C. § 102(a).
THE GRIBBINS REFERENCE
Issue
In rejecting claims 1, 2, 4–8, 10, 11 and 18–20 the Examiner finds that
Gribbins teaches feeding a mammal a “diet consisting of a grain concentrate,
alfalfa hay and salt mixture.” Final Act. 9. The Examiner also finds that the
feed mixture of Gribbins would have “at least 25 ppm boron, 25-50 ppm or
in a boron-containing portion thereof.” Id.
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Appellants contend that Gribbins does not disclose a method for
treating osteochondrosis. Appeal Br. 11. Appellants also argue that
Gribbins does not disclose administering supplemental boron above that
which is contained in a base diet. Id. With respect to claim 10, Appellants
contend that Gribbins does not disclose a method for increasing the
efficiency of absorption of phosphorous or decreasing the amount of
phosphorous excreted by a mammal. Id.
The issue with respect to this rejection is whether the Examiner has
shown by a preponderance of the evidence that Gribbins anticipates claims
1, 2, 4–8, 10, 11 and 18–20 under 35 U.S.C. § 102(a).
Findings of Fact
FF9. Gribbins teaches feeding a steer a feed “consisting of a grain
concentrate, alfalfa hay and a salt mixture.” Gribbins col. 6, ll. 27–29.
FF10. Gribbins discloses a new source of protein to supplement the
feeding of Ruminantia. Gribbins, col. 1, ll. 1–2.
Analysis
We agree with Appellants that the claims are not anticipated by
Gribbins. While Gribbins discloses a mammal feed comprising alfalfa hay
as a part of a base diet, FF 9, the Examiner has not pointed to anything in
Gribbins that teaches feeding alfalfa to provide supplemental boron to the
mammals. The only supplement taught by Gribbins is a protein supplement.
FF10. Gribbins does not disclose all the elements of the claims.

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Conclusion of Law
We conclude that the Examiner has failed to establish by a
preponderance of the evidence that claims 1, 2, 4–8, 10, 11 and 18–20 are
anticipated by Gribbins under 35 U.S.C. § 102(a).
THE UNDERWOOD REFERENCE
Issue
In rejecting claims 1–12 and 18–20 as anticipated by or obvious over
Underwood, the Examiner finds that
Underwood teaches that boron is a “well-tolerated
element” and administering boron by feed or drinking water
supplementation, and boron-containing materials therefor
including boron-containing cereals, legumes and grasses
(legumes, 14-78ppm; and Lucerne (alfalfa), 35-66ppm)(broadly,
about at least 25 ppm B, about 25-50 ppm B; effective dose; oral
administration)( e.g. pages 514-515, table 17.1: for example).
Final Act. 10. The Examiner goes on to conclude that
[t]he cited reference discloses a process comprising
administering a well-tolerated amount (therapeutically effective
dose) of a boron-containing compound to a mammal, which
appears to be identical to the presently claimed boron-containing
composition and carrier in the process thereof since the cited
reference boron compounds and the administering and effects
thereof remain inclusive of (not excluded from) the genus of
boron-containing materials and administering of the instantly
claimed method. Consequently, the claimed process appears to
be anticipated by the reference.
In the alternative, even if the composition (with respect to
phosphate metabolism or osteochondrosis) in the method and the
process thereof are not identical to the referenced composition
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and method, with regard to some unidentified characteristics, the
differences between that which is claimed and that which is
disclosed, is so slight that the referenced composition is likely to
inherently possess the same characteristics of the claimed
composition, particularly in view of the similar characteristics
which they have been shown to share (e.g. B-containing
compound, mammal-treating, oral administration). Thus, the
claimed method and the composition effective therefor would
have been obvious to those of ordinary skill in the art within the
meaning of 35 USC § 103(a).
Underwood is relied upon for the reasons discussed above.
If not expressly taught by Underwood, based upon the overall
beneficial teaching provided by this reference with respect to
boron-treating, dosing amounts, and administration including
feeding or drinking, in the manner disclosed therein, the
adjustments of particular conventional working conditions (e.g.,
determining one or more suitable dosing/concentration ranges in
which to perform such an administration to a mammal), is
deemed merely a matter of judicious selection and routine
Final Act. 10–11.
Appellants contend that “Underwood does not disclose, teach or
suggest a method of preventing or treating osteochondrosis as called for by
independent claim 1. Nor does it disclose, teach or suggest administering
the mammal about 25 ppm to about 50 ppm of supplemental elemental
boron as a boron containing compound added to a carrier.” Appeal Br. 12.
Appellants also argue that Underwood does not teach administering about 25
ppm to about 50 ppm of supplemental boron to an animal as required by the
claims. Appeal Br. 12.
Findings of Fact
FF11. Underwood teaches that “[b]oron is an essential nutrient for
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plants, but the evidence for essentiality to animals is equivocal. Underwood
514.
FF12. Underwood teaches that legumes contain from 14 to 78
milligrams of boron per kilogram. Underwood 515, Table 17.1
FF13. Underwood teaches that “boron supplementation of the diet of
men and women (particularly those receiving hormone supplements) has
increased values for markers of copper, vitamin D and haematological status
and has decreased bone turnover (Nielsen, 1994). However, boron
deficiencies in farm livestock have yet to be reported.” Underwood 516.
FF14. Underwood discloses feeding sheep a diet of maize silage and
soybean meal which contained 32 mg per kilogram boron. Underwood 514.
FF15. Underwood teaches that “[b]oron is a well-tolerated element,
more than 300 mg B kg-1 being required to produce the first signs of toxicity
in poultry.” Underwood 516.
Principles of Law
A proper § 103 analysis requires “a searching comparison of the
claimed invention—including all its limitations—with the teaching of the
prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).
“[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Analysis
We agree with Appellants that Underwood neither anticipates nor
renders obvious the rejected claims. The Examiner has pointed to no
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persuasive evidence to show that Underwood discloses or suggests providing
supplemental boron in an amount of from about 25 ppm to about 50 ppm.
While Underwood discloses providing men and women supplemental boron,
there is no discussion in Underwood of the amounts of supplemental boron
given. FF13. Similarly, while Underwood discloses feeding sheep a diet
containing 32 ppm boron, FF14, the Examiner has offered no persuasive
evidence that the boron was supplemental boron over the amount that would
be in the sheep’s base diet.
Conclusion of Law
We conclude that the Examiner has failed to establish by a
preponderance of the evidence that the rejected claims are either anticipated
by or obvious over Underwood under 35 U.S.C. §§ 102(b) or 103(a).
THE ARHOLA REFERENCE
Issue
In rejecting claims 1–12 and 18–20 as anticipated by or obvious over
Arhola, the Examiner finds that Arhola teaches a food supplement
comprising 20 ppm of boron. Final Act. 12. The Examiner finds that the
supplement of Arhola would inherently act to prevent osteochondrosis and
would aid in phosphorous retention. Id. The Examiner finds that “[t]he
cited reference discloses a process comprising administering a dose of a
boron-containing compound to a mammal and the bone, which appears to be
identical to the presently claimed boron-containing composition and process
thereof since the boron compounds and the administering and effects thereof
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as taught by the cited reference are inclusive of the genus of boron-
containing materials and administrations as instantly claimed.” Final Act.
12–13.
With respect to obviousness, the Examiner finds that
the differences between that which is claimed and that which is
disclosed, is so slight that the referenced composition is likely
to inherently possess the same characteristics of the claimed
composition, particularly in view of the similar characteristics
which they have been shown to share (e.g. B-containing
compound, mammal-treating and P-modulating effect of oral
administration). Thus, the claimed method and the composition
effective therefor would have been obvious to those of ordinary
skill in the art within the meaning of 35 USC § 103(a).
Final Act. 13. With respect to the amounts of boron administered, the
Examiner finds that determining the proper dosages would be a matter of
“judicious selection and routine optimization.” Id.
The Examiner also rejected the pending claims as obvious over
Arhola combined with Underwood. Final Act. 14. The Examiner finds that
Underwood teaches that boron may be administered in amounts up to 300
mg/kg. Id. The Examiner concludes that
[i]t would have at least been obvious for one to have would have
provided an amount of boron-containing material because the
cited reference of Arhola teaches that providing (versus the
instant claims) the same compounds in beneficial amounts to the
same animals (mammals) and in general providing amounts of
boron of about 25 mg/kg or greater was known in the art. One
would have been motivated to have provided the claimed
amounts in the method of Arhola because Arhola teaches
providing an administrable/dietary/oral dose amount about 25
ppm (20ppm), and because Underwood further teaches that diets
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may be supplemented up to 300 mg/kg boron-containing
material. One would have had a reasonable expectation of
success in providing the instantly claimed amounts, because
success merely requires providing a dosing amount of about the
amount of Arhola and/or within the amount of Underwood for
the benefit of dietary supplementation of boron; and because if
not taught by the references, supplementation as instantly
disclosed is obtainable by the mere consumption of known
naturally-occurring materials which would provide the claimed
boron amount (e.g. 37 ppm boron by consuming alfalfa; page 20
at ln 10 for example).
Accordingly, the claimed invention as a whole was at least
prima facie obvious, if not anticipated by the reference,
especially in the absence of sufficient, clear, and convincing
evidence to the contrary.
Final Act. 14–15.
Appellants contend that Arhola does not disclose all the limitations of
the claims. Appeal Br. 13. Appellants argue that Arhola does not discuss
treatment of osteochondrosis. Appeal Br. 13–14. Appellants also argue that
Arhola teaches precisely 20 ppm boron and does not teach higher amounts.
Appeal Br. 14.
With respect to claim 10, Appellants contend that Arhola does not
teach increasing the efficiency of the absorption of phosphorous nor does it
teach reducing the amount of phosphorous excreted. Appeal Br. 14.
With respect to the combination of Arhola and Underwood,
Appellants argue that
[t]he combination of Arhola and Underwood does not teach or
suggest both increasing the efficiency of absorption of
phosphorus as well as decreasing the amount of phosphorus
excreted by supplementation with about 25 ppm to about 50
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ppm boron, as called for by claims 10 through 12. Arhola
suggests the interplay between magnesium, calcium and
phosphorus and decreased secretion of same from the body.
However, the combination of references does not teach or
suggest a nexus between Arhola's 0.002% boron and increasing
the efficiency of absorption of phosphorus as well as decreasing
the amount of phosphorus excretion, as required by the claims.
(footnote omitted).
Appeal Br. 15.
The issue presented is whether the pending claims are anticipated by
or rendered obvious by Arhola, either alone or in combination with
Underwood.
Findings of Fact
FF16. Arhola teaches a food supplement containing boron which can
be used to strengthen bone and cartilage. Arhola, Abstract.
FF17. The supplement of Arhola can be administered to trotting
horses, athletes, racing animals, and “mammals suffering from problems
relating to the bones, joints and metabolism.” Arhola col. 1, ll. 1–7.
FF18. The supplement contains 0.002% boron. Arhola, claim 1.
FF19. Arhola discloses that boron decreases the secretion of
phosphorous from the body. Arhola col. 3, ll. 11–13.
Analysis
Claims 1 and 10 are representative of the rejected claims. Claim 1 is
directed to the use of boron to treat or prevent osteochondrosis and claim 10
is directed to the use of boron to regulate phosphorous.
We agree with the Examiner that claims 1 and 10 are anticipated by
Arhola. Arhola teaches supplementing an animal’s diet with elemental
boron in an about of 20 ppm which is properly interpreted as falling within
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about 25 ppm. Ans. 28. While Arhola does not specifically teach treatment
or prevention of osteochondrosis, we agree with the Examiner that the
compound administered by Arhola would have been expected to have
intrinsically the same effect as the claimed compound absent any objective
evidence to the contrary. Ans. 28–29.
We also agree with the Examiner’s alternative position that the subject
matter of the claims 1 and 10 would have been obvious over Arhola at the
time the invention was made. As the Examiner noted, the differences
between the prior art and the claimed invention are so slight that the
referenced compound is likely to inherently possess the same characteristics
as the claimed composition. Ans. 13. Moreover, we agree with the
Examiner that, with respect to the amounts administered, these parameters
are deemed to be a matter of judicious selection and routine optimization
which is well within the purview of the skilled artisan. Id. In re Aller, 220
F.2d at 456.
We further agree with the Examiner that the subject matter of claims 1
and 10 would have been obvious over Arhola combined with Underwood at
the time the invention was made. Underwood teaches that diets may be
supplemented with up to 300 mg/kg of boron. Ans. 11. As the Examiner
notes “[o]ne would have had a reasonable expectation of success in
providing the instantly claimed amounts, because success merely requires
providing a dosing amount of about the amount of Arhola and/or within the
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amount of Underwood for the benefit of dietary supplementation of boron.”
Id.
Conclusion of Law
We conclude that the Examiner has established by a preponderance of
the evidence that claims 1 and 10 are anticipated by Arhola under 35 U.S.C.
§ 102(a).
We further conclude that the Examiner has established by a
preponderance of the evidence that claims 1 and 10 would have been
obvious over Arhola or Arhola combined with Underwood as defined by 35
U.S.C. § 103(a).
Claims 2–9, 11, 12 and 18–20 have not been argued separately and
fall with claims 1 and 10. 37 C.F.R. § 41.37(c)(1)(iv).
THE BERES REFERENCE
Issue
In rejecting the pending claims as either anticipated by or obvious
over Beres, the Examiner finds that Beres teaches administering a feed
solution containing boric acid to an animal in need of the supplement. Final
Act. 15. The Examiner finds that the boric acid is supplied in an amount
equal to about 19 ppm boron. Id. The Examiner goes on to find that
[a]lthough the reference does not expressly recite administering
for an intended use of treating osteochondrosis or phosphorus
regulation (P-uptake, absorption, and excretion), this would have
been intrinsic to the boron-containing compound administration
to a mammal as taught by the reference and which is within the
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genus of mammals and boron-containing compounds as instantly
claimed.
Final Act. 15. The Examiner concludes that the claimed process is
anticipated by the reference. Final Act. 16
With respect to obviousness, the Examiner finds that
the differences between that which is claimed and that which is
disclosed, is so slight that the referenced composition in the
method is likely to inherently possess the same characteristics of
the claimed composition in the method, particularly in view of
the similar characteristics which they have been shown to share
(e.g. B-containing compound, mammal-treating effect, oral
administration). Thus, the claimed method and the composition
effective therefor would have been obvious in view of Beres to
those of ordinary skill in the art within the meaning of 35 USC
§ 103(a).
If not expressly taught by Beres, based upon the overall
beneficial teaching provided by this reference with respect to
boron-treating, dosing amounts, and administration including
feeding or drinking, in the manner disclosed therein, the
adjustments of particular conventional working conditions (e.g.,
determining one or more suitable dosing/concentration ranges in
which to perform such an administration to a mammal), is
deemed merely a matter of judicious selection and routine
optimization which is well within the purview of the skilled
artisan.
Final Act. 16.
Turing to the combination of Beres and Underwood the Examiner
finds that
[i]t would have at least been obvious for one to have would have
provided an amount of boron-containing material because the
cited reference of Beres teaches that providing (versus the instant
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claims) the same compounds in beneficial amounts to the same
animals (mammals) and in general providing amounts of boron
of about 25 mg/kg was known in the art. One would have been
motivated to have provided the claimed amounts in the method
of Beres because Beres teaches providing an administrable,
dietary, or oral dose amount about 25 ppm (about 19ppm), and
because Underwood further teaches that diets may be
supplemented up to 300 mg/kg boron-containing material. One
would have had a reasonable expectation of success in providing
the instantly claimed amounts, because success merely requires
providing a dosing amount of about the amount of Beres and/or
within the amount of Underwood for the benefit of dietary
supplementation of boron; and because if not taught by the
references, supplementation as instantly disclosed is obtainable
by the mere consumption of known naturally-occurring materials
which would provide the claimed boron amount (e.g. 37 ppm
boron by consuming alfalfa; page 20 at ln 10 for example).
Final Act. 17.
Appellants contend that Beres teaches the treatment of the
reticuloendothelic system and does not teach treatment of osteochondrosis
nor phosphorous regulation. Appeal Br. 15. Appellants argue that the
Examiner has provided no reason why one skilled in the art reading Beres
would have been led to the claimed invention. Id. Appellants further argue
that the Examiner has failed to articulate the motivation for combining Beres
with Harwood. Id. Finally, Appellants argue that nothing in the references
teach the subject matter of the claims as a whole. Appeal Br. 19.
The issue before us is whether the Examiner has established by a
preponderance of the evidence that the rejected claims are anticipated by
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Beres under 35 U.S.C. § 102(b) or rendered obvious over Beres either alone
or in combination with Underwood under 35 U.S.C. § 103(a).
Findings of Fact
FF20. Beres teaches a pharmaceutically acceptable composition
containing boron. Beres, Abstract.
FF21. The composition of Beres is for the treatment of
“mucovisidosis and chronic pain deriving from degenerative locomotor
diseases or accompanying diseases of tumorous origin.” Beres col.1, ll. 12–
16.
FF22. The composition of Beres comprises boric acid in the amount
of 0.01 to 1.0% by weight/volume. Beres col. 3, ll. 46–48.
Analysis
Claims 1 and 10 are representative of the rejected claims. Claim 1 is
directed to the use of boron to treat or prevent osteochondrosis and claim 10
is directed to the use of boron to regulate phosphorous.
We agree with the Examiner that claims 1 and 10 are anticipated by
Beres. Beres teaches administering a composition containing boric acid to
humans. FF19–21. The boron content of the composition is about 19 ppm.
Final Act. 15. We agree with the Examiner that
[a]lthough the reference does not expressly recite
administering for an intended use of treating osteochondrosis or
phosphorus regulation (P-uptake, absorption, and excretion), this
would have been intrinsic to the boron-containing compound
administration to a mammal as taught by the reference and which
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is within the genus of mammals and boron-containing
compounds as instantly claimed.
Final Act. 15
We also agree with the Examiner that the subject matter of claims 1
and 10 would have been obvious over Beres or Beres combined with
Underwood at the time the invention was made. As the Examiner noted, the
differences between the claims and Beres are so slight that the compositions
of Beres are likely to have the same properties as those of the claimed
invention. Final Act. 16. Moreover, determining the correct amount to
administer would be a matter of judicious selection and routine optimization.
Final Act. 16–17. This is especially true as Underwood teaches that diets
may be supplemented with up to 300mg/kg of boron without ill effect. Final
Act. 17.
Appellants contend that Beres is irrelevant to the present invention as
Beres is directed to treatment of muscovisidosis. Appeal Br. 17. We are
unpersuaded. Beres is also directed to treatment of degenerative locomotion
disorders. FF20.
Appellants also contend that Beres suggests the use of boric acid as
only one of numerous components in a complex pharmacologic agent.
Appeal Br. 17. Again we are unpersuaded. As the Examiner points out, the
present claims do not exclude the presence of additional materials but only
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call for “successful contacting of the boron compound with the mammal in
the requisite dose.” Ans. 29.
Conclusions of Law
We conclude that the Examiner has established by a preponderance of
the evidence that claims 1 and 10 are anticipated by Beres under 35 U.S.C.
§ 102(b).
We also conclude that claims 1 and 10 would have been obvious over
Beres alone or in combination with Underwood under 35 U.S.C. § 103(a).
Claims 2–9, 11, 12, and 18–20 have not been argued separately and
fall with claims 1 and 10. 37 C.F.R. § 41.37(c)(1)(iv).
THE KURTOGLU REFERENCE
Issue
In rejecting the pending claims as either anticipated by or obvious
over Kurtoglu the Examiner finds that the reference teaches providing diets
with boron in addition to the base amount contained in the diet. Final Act.
18. The Examiner finds that
[a]lthough the reference does not expressly recite
administering for an intended use of treating osteochondrosis
(OC) or phosphorus regulation (P uptake, absorption, and
excretion), this would have been intrinsic to boron-containing
compound administration to a mammal as taught by the reference
and which is within the genus of mammals and boron-containing
compounds as instantly claimed. The cited reference discloses a
process comprising administering a dose of a boron-containing
compound to a mammal, which appears to be identical to the
presently claimed boron-containing composition and process
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thereof since the boron compounds and the administering and
effects thereof as taught by the cited reference are inclusive of
the genus of boron-containing materials and administrations as
instantly claimed. Consequently, the claimed process appears to
be anticipated by the reference.
Id.
With respect to the rejection under 35 U.S.C. § 103(a), the Examiner
finds that
even if the composition (with respect to P-metabolism or OC) in
the method and the process thereof are not identical to the
referenced composition and method, with regard to some amount
or unidentified characteristics, the differences between that
which is claimed and that which is disclosed, is so slight that the
referenced composition is likely to inherently possess the same
characteristics of the claimed composition, particularly in view
of the similar characteristics which they have been shown to
share (e.g. B-containing compound, mammal-treating, oral
administration). Thus, the claimed method and the composition
effective therefor would have been obvious to those of ordinary
skill in the art within the meaning of 35 USC § 103(a). If not
expressly taught by Kurtoglu, based upon the overall beneficial
teaching provided by this reference with respect to boron-
treating, dosing amounts, and administration including feeding
or drinking, in the manner disclosed therein, the adjustments of
particular conventional working conditions (e.g., determining
one or more suitable dosing/concentration ranges in which to
perform such an administration to a mammal), is deemed merely
a matter of judicious selection and routine optimization which is
well within the purview of the skilled artisan.
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Final Act. 19.
With respect to the combination of Kurtoglu and Underwood the
Examiner finds that
[i]t would have been obvious to a person of ordinary skill in the
art at the time the instant invention was made to have provided
the claimed amounts of boron containing material, because
Kurtoglu teaches that providing (versus the instant claims) the
same compounds in beneficial amounts to the same animals
(mammals) and in general providing dietary amounts of boron
non-deficient above 15 ppm (about 25 mg/kg) was known in the
art and because Underwood teaches providing dietary amounts
of boron up to 300 ppm. One would have been motivated to have
provided the claimed amounts in the method of Kurtoglu because
Kurtoglu teaches providing an administrable, dietary, or oral
dose amount about 25 ppm (>15 ppm, for example), and because
Underwood further teaches that diets may be supplemented up to
300 mg/kg boron-containing material. One would have had a
reasonable expectation of success in providing the instantly
claimed amounts, because success merely requires providing a
dosing amount of about the amount of Kurtoglu and/or within the
amount of Underwood for the known benefit of dietary
supplementation of boron; and because if not taught by the
references, supplementation as instantly disclosed is obtainable
by the mere consumption of known naturally-occurring materials
which would provide the claimed boron amount (e.g. 37 ppm
boron by consuming alfalfa; page 20 at ln 10 for example).
Final Act. 19–20.
Appellants contend that Kurtoglu does not teach or disclose the
treatment or prevention of osteochondrosis or the regulation of phosphorous.
Appeal Br. 20. Appellants go on to argue that the Examiner has offered no
evidence that Kurtoglu would necessarily and inevitably result in the
prevention or treatment of osteochondrosis or regulation of phosphorous and
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that one skilled in the art would not recognize from Kurtoglu that such
results could be achieved. Id. Appellants also argue that Kurtoglu does not
teach supplementation in the amount of about 25 ppm to about 50 ppm for
treatment of specific diseases. Id.
The issue is whether the Examiner has established by a preponderance
of the evidence that the pending claims are anticipated by or obvious over
Kurtoglu under 35 U.S.C. § 102(b) or 35 U.S.C. § 103(a).
Findings of Fact
FF23. Kurtoglu teaches providing the addition of 5 and 25 mg/kg to
the diets of chickens. Kurtoglu 185.
FF24. Kurtoglu teaches that boron is necessary for normal cartilage
and bone development in chicken. Kurtoglu 184.
Analysis
Claims 1 and 10 are representative of the rejected claims. Claim 1 is
directed to the use of boron to treat or prevent osteochondrosis in a mammal
and claim 10 is directed to the use of boron to regulate phosphorous.
We agree with the Examiner that claim 10 is anticipated by Kurtoglu.
Kurtoglu teaches providing an animal a supplemental boron in about 25
ppm. FF22. While Kurtoglu does not specifically discuss regulation of
phosphorous, we agree with the Examiner that the composition disclosed in
Kurtoglu is identical to the composition administered in the claimed method
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and it would have been intrinsic that the compounds would have produced
the desired effects. Final Act. 18.
We also agree with the Examiner that the subject matter of claim 10
would have been obvious to one skilled in the art at the time the invention
was made. As the Examiner points out, the differences between the claimed
method and the teachings of Kurtoglu are so slight that the referenced
composition is likely to possess the same characteristics as the claimed
composition. Final Act. 19. In addition, we agree with the Examiner that
“the adjustments of particular conventional working conditions (e.g.,
determining one or more suitable dosing/concentration ranges in which to
perform such an administration to a mammal), is deemed merely a matter of
judicious selection and routine optimization which is well within the
purview of the skilled artisan.” Id.
Appellants contend that the Examiner has not shown that the
compound would intrinsically exhibit the claimed effects. Appeal Br. 20.
We are unpersuaded. After a prima facie case is made out, the burden shifts
to the applicant to show a difference between the prior art compounds and
the claimed compound. The PTO lacks the resources to do comparisons. In
re Best, 562 F.2d 1252, 1255 (CCPA 1977). Here the Examiner has shown
that the two methods are nearly identical except for the expected results.
Final Act. 19. It is incumbent on the Applicant to produce evidence to show
the differences in the two methods. Appellants have offered no persuasive
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evidence, other than attorney argument, that the method of Kurtoglu would
not intrinsically produce the recited results.
Conclusion of Law
We conclude that the Examiner has established by a preponderance of
the evidence that claim10 is anticipated by Kurtoglu under 35 U.S.C. §
102(b).
We also conclude that the Examiner has established by a
preponderance of the evidence that claim 10 would have been obvious over
Kurtoglu under 35 U.S.C. § 103(a)
Claims 11 and 12 have not been argued separately and therefore fall
with claim 10. 37 C.F.R. § 41.37(c)(1)(iv). As to claim 1 and its dependent
claims, however, we note that Kurtoglu’s chickens (FF23) are not mammals,
as claim 1 requires, and therefore reverse the rejection as to claims 1, 2–9,
and 18–20.
THE ARMSTRONG REFERENCE
Issue
In rejecting the pending claims as obvious over Armstrong the
Examiner finds that Armstrong teaches administering a boron-dosing
amount of 5 mg to 15 mg/ kg of a boron containing compound. Final Act.
21. The Examiner also finds that Armstrong teaches that boron effects
calcium and phosphorous metabolism in humans and other mammals
including reducing excretion of phosphorous. Id. The Examiner finds that
the disclosed process appears to be “identical to the presently claimed boron-
containing composition and process thereof and intrinsic to the compound
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and chemical effects thereof, and since the boron compounds and the
administering and effects thereof as taught by the cited reference are
inclusive of the genus of boron-containing materials and administrations as
instantly claimed.” Id.
The Examiner goes on to find that while Armstrong does not recite the
specific parts per million called for in the instant claims, the teachings of
Underwood supply the requisite teaching. Final Act. 21–22. The Examiner
concludes that
[i]t would have been obvious to a person of ordinary skill in the
art at the time the instant invention was made to have provided
at least 25 ppm in the material in the process of Armstrong
because as taught therein, providing boron-containing materials
to supplement nutritional materials was known in the art and that
increasing dose (from 5 to 15 mg/kg; broadly, about 25 ppm
boron) provided the benefit of increasing bone shear force. One
would have been motivated to have provided boron in the amount
instantly claimed, because Armstrong teaches the benefit of
providing increasing boron and because Underwood further
teaches naturally occurring nutritional materials having the
claimed amounts including providing amounts up to 300 mg/kg
in a dietary amount (and showing the dose-dependent tissue
absorption (of about 5%) of dietary boron, e.g. page 516-517, at
table 17.2 and "toxicity"). If not expressly taught by Armstrong,
based upon the overall beneficial teaching provided by this
reference and as evidenced by Underwood with respect to boron-
treating, dosing amounts, and tissue uptake, and administration
including feeding or drinking, in the manner disclosed therein,
the adjustments of particular conventional working conditions
(e.g., determining one or more suitable dosing/concentration
ranges in which to perform such a boron administration to an
animal or mammal), is deemed merely a matter of judicious
selection and routine optimization which is well within the
purview of the skilled artisan. Also, please note, differences in
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concentration (e.g. amounts, concentrations, proportions, ppm)
do not patentability distinguish the claimed subject matter
encompassed by the prior art unless there is objective evidence
indicating such concentration are critical (and in view of both the
original disclosure which teaches noncriticality, having effective
amounts less than instantly claimed and (ii) that the compounds
of the prior art and concentrations thereof would not provide (are
precluded from) providing the instantly claimed effect upon the
intended use of osteochondrosis.
Accordingly, the claimed invention as a whole was at
least prima facie obvious, if not anticipated by the reference,
especially in the absence of sufficient, clear, and convincing
evidence to the contrary.
Final Act. 22–23.
Appellants contend that the Examiner has failed to provide any
rationale for combining the references. Appeal Br. 22–23. Appellants also
argue that Armstrong does not teach or suggest the effect of boron on
osteochondrosis nor does it teach the effect on phosphorous regulation.
Appeal Br. 23. Appellants argue that Underwood is silent as to treating
osteochondrosis and actually teaches about bone turnover, which teaches
away from the present invention. Id.
The issue presented is whether the Examiner has established by a
preponderance of the evidence that the rejected claims would have been
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obvious over Armstrong combined with Underwood under 35 U.S.C.
§ 103(a).
Findings of Fact
FF25. Armstrong teaches feeding barrows 5 mg/kg and 15mg/kg
supplemental boron. Armstrong 3121.
FF26. Armstrong teaches that the “[u]ltimate shear force of the fibula
was increased (P<0.05) in barrows consuming diets supplemented with 15
mg B/kg diet compare with pigs supplemented with 5 mg B/Kg diet.”
Armstrong 3124.
Analysis
Claims 1 and 10 are representative of the rejected claims. Claim 1 is
directed to the use of boron to treat or prevent osteochondrosis and claim 10
is directed to the use of boron to regulate phosphorous.
We agree with the Examiner that the subject matter of claims 1 and 10
would have been obvious to one of ordinary skill in the art at the time the
invention was made. Armstrong teaches providing barrows (pigs) with
supplemental boron in an amount of up to 15 ppm of the base feed. FF24.
Armstrong also teaches that increasing the amount of supplemental boron
increases the benefit provided by the boron. FF25. Armstrong teaches that
animals can tolerate up to 300 ppm of supplemental boron. FF15. As the
Examiner found,
[o]ne would have been motivated to have provided boron in the
amount instantly claimed, because Armstrong teaches the benefit
of providing increasing boron and because Underwood further
teaches naturally occurring nutritional materials having the
claimed amounts including providing amounts up to 300 mg/kg
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in a dietary amount (and showing the dose-dependent tissue
absorption (of about 5%) of dietary boron, e.g. page 516-517, at
table 17.2 and “toxicity”).
Final Act. 22–23.
Appellants argue that Underwood teaches away from the claimed
invention. Appeal Br. 23. We are unpersuaded. Underwood’s teaching
with respect to bone turnover does not “criticize, discredit, or otherwise
discourage the solution claimed,” therefore it cannot be said to teach away
from the claimed method. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004).
Appellants also argue that the Examiner has failed to provide a
rationale for combining the cited references. Appeal Br. 22–23. Again, we
are unpersuaded. As noted above, the Examiner explicitly explained the
motivation to combine the cited references. The Examiner found that
[i]n this case, Armstrong and Underwood each teach feeding
boron materials and providing boron-containing materials in feed
materials for the purpose of providing a nutrient (boron) in the
diet, and further Underwood teaches that the boron materials are
well-tolerated up to amount in excess of those instantly claimed,
including up to 300 mg B/kg material in the daily diet.
Ans. 31.
With respect to claim 10, Appellants argue that Armstrong teaches
away from using supplemental boron to effect phosphorous regulation as
Armstrong teaches that supplemental boron does not affect apparent
absorption of phosphorous. Appeal Br. 23. We remain unpersuaded. While
Armstrong reports that boron had marginal effects on the metabolism in the
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present study, Armstrong also reported that other studies reported that boron
did affect metabolism of phosphorous. Armstrong 3124. Armstrong does
not unequivocally criticize or discredit the use of boron to regulate
phosphorous.
Conclusions of Law
We conclude that the Examiner has established by a preponderance of
the evidence that claims 1 and 10 would have been obvious over Armstrong
combined with Underwood under 35 U.S.C. § 103(a).
Claims 2–9, 11, 12 and 18–20 have not been argued separately and
therefore fall with claims 1 and 10. 37 C.F.R. § 41.37(c)(1)(iv).
SUMMARY
We reverse the rejection of claims 1–9 and 18-20 under 35 U.S.C.
§ 112, first paragraph.
We affirm the rejection of claims 1, 5–9 and 18-20 under 35 U.S.C.
§ 112, second paragraph as indefinite.
We reverse the rejection of claims 1–12 and 18–20 under 35 U.S.C.
§ 102(b) as anticipated by Rigby-Burdette.
We reverse the rejection of claims 1, 2, 4-8, 10, 11 and 18–20 under
35 U.S.C. § 102(b) as anticipated by Gribbins.
We reverse the rejection of claims 1–12 and 18–20 under 35 U.S.C.
§ 102(a) as anticipated by Underwood and the rejection under 35 U.S.C.
§ 103(a) as obvious over Underwood.
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We affirm the rejection of claims 1–12 and 18–20 under 35 U.S.C.
§ 102(a) as anticipated by Arhola and the rejection under 35 U.S.C. § 103(a)
as obvious over Arhola combined with Underwood.
We affirm the rejection of claims 1–21 and 18–20 under 35 U.S.C.
§ 102(a) as anticipated by Beres and the rejection under 35 U.S.C. § 103(a)
as obvious over Beres combined with Underwood.
We affirm the rejection of claims 10–12 under 35 U.S.C. § 102(a) as
anticipated by Kurtoglu and the rejection of claims 10–12 under 35 U.S.C.
§ 103(a) as obvious over Kurtoglu, but reverse those rejections as to claims
1, 2–9, and 18–20. We affirm the rejection of claims 1–12 and 18–20 under
35 U.S.C. § 103(a) as obvious over Armstrong in view of Underwood.
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