Ex Parte Luhadiya et al

Patent Trial and Appeal Board

May 4, 2016

13098756 (P.T.A.B. May. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/098,756
132446 7590
Mars Petcare
Theresa Shearin
FILING DATE
05/02/2011
05/06/2016
315 Cool Springs Blvd.
Franklin, TN 37067
FIRST NAMED INVENTOR
Ashok Premchand Luhadiya
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.
IAM0128 US 9434
EXAMINER
SHIAO, YIH-HORNG
ART UNIT PAPER NUMBER
1672
NOTIFICATION DATE DELIVERY MODE
05/06/2016 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):
mars.patents@effem.com
theresa.shearin@effem.com
becca.barnett@effem.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASHOK PREMCHAND LUHADIY A,
GARY MITCHELL DAVENPORT, JIN ZHANG,
GEORGE S. ROTH, and DONALD KEITH INGRAM
Appeal2013-010637
Application 13/098,756
Technology Center 1600
Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a pet
food composition. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the Real Party in Interest as The Procter &
Gamble Company (see App. Br. 1 ).
Appeal2013-010637
Application 13/098,756
Statement of the Case
Background
"[C]aloric restriction has been shown to consistently extend the life
span, delay onset and slow tumor progression, and retard physiologic aging"
(Spec. 1, 11. 13-14 ). "Reductions in fasting glucose and insulin levels and
improvements in insulin sensitivity are readily measured biomarkers of
caloric restriction" (Spec. 1, 11. 29-30). "Glucose anti-metabolites such as 2-
deoxy-D-glucose are compounds related to glucose. However, due to
structural differences from glucose such compounds block or inhibit certain
aspects of carbohydrate metabolism and may therefore mimic the effects of
caloric restriction" (Spec. 2, 11. 8-10).
The Claims
Claims 1-20 are on appeal. Independent claim 1 is representative and
reads as follows:
1. A pet food composition comprising a glucose anti-
metabolite to provide at least about 0.0001 gram and less than 1
gram glucose anti-metabolite per kg body weight of a pet and
butylated hydroxyanisole.
The Issues
A. The Examiner rejected claims 1-20 under 35 U.S.C. § 112(b) as
indefinite (Ans. 4--5).
B. The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as
obvious over Hayek2 and Brown3 (Ans. 6-7).
2 Hayek et al., US 7,666,459 B2, issued Feb. 23, 2010.
3 Brown et al., US 5,894,029, issued Apr. 13, 1999.
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Application 13/098,756
A. 35 U.S. C. § l l 2(b)
The Examiner finds that the phrase "'at least about' is indefinite
because the metes and bounds of limitation 'at least about' cannot be
determined with two broad limitations cited simultaneously" (Ans. 5).
Appellants contend that "[t]here is no separate showing that the recital
'at least about' creates doubt about the meaning of Claims 1-20" (App. Br.
4).
We acknowledge that the phrase "'at least about 160,000"' has been
held to be indefinite based on a specific set of facts, see Amgen Inc. v.
Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1218 (Fed. Cir. 1991). However,
the Amgen court specifically "caution[ed] that [its] holding that the term
'about' renders indefinite claims 4 and 6 should not be understood as ruling
out any and all uses of this term in patent claims. It may be acceptable in
appropriate fact situations, even though it is not here." Id. (citation omitted).
Here, the Specification states that "[ d]osage will depend upon the glucose
anti-metabolite component used and will vary .... Dosage in the range of
about 0.0001 or about 0.001 grams/kg to about 1 g/kg can be beneficial ....
All ranges therebetween are envisioned" (Spec. 8, 1. 28 to 9, 1. 12).
The Examiner has not explained why the specific facts of this case
cause the scope of the claims to be indefinite. Therefore, we cannot sustain
the rejection under 35 U.S.C. § 112(b).
B. 35 U.S.C. § 103(a)
The Examiner finds that Hayek teaches a "pet food composition [that]
is nutritionally balanced and comprises less than 5% of a glucose anti-
metabolite, such as mannoheptulose" (Ans. 6). The Examiner finds that
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Application 13/098,756
Hayek teaches "an optimal dose of the glucose anti-metabolite, e.g.,
mannoheptulose, to the pet on a daily basis is from about 1 mg/kg body
weight to about 15 mg/kg body weight" (Ans. 6).
The Examiner acknowledges that Hayek does not teach the addition of
butylated hydroxyanisole (BHA) or butylated hydroxytoluene (BHT)
preservatives (Ans. 6-7). The Examiner finds that Brown teaches "BHA
and/or BHT are normally used as antioxidant preservatives in the pet food in
an amount sufficient to effect the desired antioxidant properties in the
product, generally less than 1.0% by weight of the snack" (Ans. 7).
The Examiner finds it obvious "to combine or to modify prior art by
including various quantities ofBHA and/or BHT in a pet food composition
comprising glucose anti-metabolite" (Ans. 7).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that the ordinary artisan would
have had reason to incorporate BHT or BHA into Hayek's pet food
composition?
Findings of Fact
1. Hayek teaches "pet food compositions comprising a component
selected from the group consisting of 2-deoxy-D-glucose; 5-thio-D-glucose;
3-0-methylglucose; 1,5-anhydro-D-glucitol; 2,5-anhydro-D-mannitol;
mannoheptulose; and mixtures thereof' (Hayek, col. 2, 11. 23-27).
2. Hayek teaches that "particular levels of a component selected
from 2-deoxy-D-glucose; 5-thio-D-glucose; 3-0-methylglucose; 1,5-
anhydro-D-glucitol; 2,5-anhydro-D-mannitol; mannoheptulose; and mixtures
thereof, are useful .... In particular, an optimal dose to the pet, on a daily
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Application 13/098,756
basis, has been surprisingly discovered to be from about 1 mg/kg to about 15
mg/kg" (Hayek, col. 4, 11. 10-19).
3. Hayek teaches that the pet food may be a "composition such as
a dry composition (for example, kibble), semi-moist composition, wet
composition, or any mixture thereof. Alternatively or additionally, the
composition is a ... treat (e.g., biscuits) or any other delivery form" (Hayek,
col. 4, 11. 47-52).
4. Brown teaches "a pet snack food in the form of animal-shaped
and bone-shaped biscuits, cookies or kibbles" (Brown, col. 1, 11. 10-11).
5. Brown teaches that
effective amounts of antioxidant preservatives as normally
used in the food industry can be used to make the core
matrix. For example, one can utilize butylated
hydroxytoluene (BHT), butylated hydroxyanisole (BHA),
ethyoxyquin, or the like in an amount sufficient to effect the
desired antioxidant properties in the product, generally less
than 1. 0% by weight of the snack.
(Brown, col. 5, 11. 18-25).
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'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 6-7; FF 1-5) and agree that the
claims are rendered obvious by Hayek and Brown. We address Appellants'
arguments below.
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Application 13/098,756
Appellants contend that "using impermissible hindsight
reconstruction, there was no reason to work from Brown among the
multiplicity of publications related to preservatives for pet foods. Further,
Brown teaches not only BHA and BHT, but also ethoxyquin, benzoates,
propionates, and sorbate salts as exemplary preservatives" (App. Br. 5).
We are not persuaded. The Examiner specifically finds that a reason
to incorporate BHA and/or BHT into Hayek's pet food compositions (FF 1-
3) is because "BHA and/or BHT are normally used as antioxidant
preservatives in the pet food" (Ans. 7; cf FF 5). Moreover, to the extent that
Brown teaches multiple preservatives, selection of obvious equivalents is
prima facie obvious. Wrigley found a "strong case of obviousness ...
[where the claim] recites a combination of elements that were all known in
the prior art, and all that was required to obtain that combination was to
substitute one well-known ... agent for another." Wm. Wrigley Jr. Co. v.
Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012).
Appellants contend that "[ t ]here was no apparent reason to select
BHA and/or BHT from the universe of available preservatives, and no
reasonable expectation of achieving a synergistic benefit by using a
combination of BHA and/or BHT and a glucose antimetabolite" (App. Br.
5).
We do not find this argument persuasive because Appellants have
provided no evidence of synergism, much less any evidence of a secondary
consideration such as unexpected results. Unexpected results must be
established by factual evidence, and attorney statements are insufficient to
establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470-71
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(Fed. Cir. 1997) ("[A]ttomey argument [is] not the kind of factual evidence
that is required to rebut a prima facie case of obviousness"). Even the
teachings at pages 3 and 4 of the Specification simply represent speculation
without any evidentiary support that any actual unexpected result occurs
when BHA/BHT and glucose anti-metabolites are co-administered. See In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (Arguments and
conclusions unsupported by factual evidence carry no evidentiary weight.)
Conclusions of Law
The evidence of record support the Examiner's conclusion that the
ordinary artisan would have had reason to incorporate BHT or BHA into
Hayek's pet food composition.
SUMMARY
In summary, we reverse the rejection of claims 1-20 under 35 U.S.C.
§ 112(b) as indefinite.
We affirm the rejection of claim 1under35 U.S.C. § 103(a) as
obvious over Hayek and Brown. Claims 2-20 fall with claim 1.
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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