Ex Parte Martinez et al

Patent Trial and Appeal Board

Jun 13, 2016

12999563 (P.T.A.B. Jun. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/999,563 02/25/2011
23909 7590 06/15/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Sarah Martinez
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.
8458-00-HL 6256
EXAMINER
CHUI, MEI PING
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
06/15/2016 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):
Patent_Mail@colpal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SARAH MARTINEZ, PA VINEE CHINACHOTI,
DOUGLAS NADEU and SHAWN TAYLOR1
Appeal2014-005060
Application 12/999,563
Technology Center 1600
Before FRANCISCO C. PRATS, JACQUELINE T. HARLOW, 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
compositions and methods for increasing water intake by animals, which
have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The invention relates to an effervescent composition for addition to
drinking water of an animal as well as the use of the composition for
1 Appellants identify the Real Party in Interest as Hills Pet Nutrition, Inc.
Br. 2.
Appeal2014-005060
Application 12/999,563
hydration treatment. Spec. ill. The composition contains palatants, such as
protein hydrolysates to improve palatability and increase water consumption.
Spec. ii 9. The composition can also be used to deliver micronutrients to
animal drinking water and to encourage the animal to drink water. Spec. ii
1.
Claims 1, 3-17 are on appeal. Claim 1 is illustrative and reads as
follows:
1. An effervescent composition for addition to the
drinking water of an animal, which composition comprises an
effervescent agent and a palatant, wherein the palatant
comprises a hydrolysed protein palatant.
The claims stand rejected as follows:
Claims 1, 3-7 and 9-17 have been rejected under 35 U.S.C. § 103(a)
as unpatentable over Tolley2 GB 2083997 A (published Apr. 7, 1982)
("Piers") in view of Yu et al., US 2003/0086961 Al (published May 8,
2003) ("Yu").
Claim 8 has been rejected under 35 U.S.C. § 103(a) as unpatentable
over Tolley in view of Yu in further view of Aldritt et al., WO 2005/072759
Al (published Aug. 11, 2005)("Aldritt").
2 GB 2083997 A lists Piers Calbert Tolley as the inventor. During
prosecution both the Examiner and the Appellants referred to the reference
by the inventor's first name "Piers". For consistency we will refer to the
reference as "Piers."
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DISCUSSION
Issue
The Examiner has rejected claims 1 and 3-17 as obvious. The
Examiner finds that "Piers teaches an effervescent tablet which is
dissolvable readily in water and is suitable for adding to animals' drinking
water comprising: a water-soluble substrate, vitamins, trace elements, an
antioxidant, flavoring agent." Final Action 3. The Examiner also finds that
"Yu teaches a high moisture palatable composition that can significantly
increase total water intake and urine production in a companion pet ...
wherein the palatable composition comprises water and a palatability
enhancing agent, i.e. animal hydrolysates." Final Action 2-3. The
Examiner goes on to find that
One of the ordinary skilled in the art would have been
motivated to add the palatant taught by Yu into Piers' s
effervescent composition because Yu teaches that their high
moisture palatable composition containing a palatability
enhancer can enhance the palatability for the animals, and thus
can significantly increase total water intake and urine
production for pets, and can help increasing total water intake
and improving hydration for animals when it is contained in the
animals' drinking water. Therefore, one of ordinary skill in the
art when reviewing the references would have been motivated
to combine Piers's effervescent composition with Yu's palatant
to produce a composition which not only can provide nutrients
to animals through the drinking water, but also can enhance the
palatability for the animals, and increase animals' total water
intake and improve hydration for animals.
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Application 12/999,563
From the teaching of the reference, one of ordinary skill
in the art would have had a reasonable expectation of success in
producing the claimed invention. Therefore, the invention as a
whole would have been prima facie obvious to one of ordinary
skill in the art at the time the invention was made.
Final Action 5---6.
With respect to claim 8 the Examiner finds that while Piers and Yu do
not teach the addition of cranberry juice to an effervescent composition, the
deficiency is cured by the teachings of Aldritt. Final Action 7. The
Examiner finds that "Aldritt teaches an effervescent composition comprising
a cranberry extract and an effervescent agent that contains an acid and a
base, wherein the composition is a tablet and disintegrates in water." Id.
The Examiner concludes by finding that "[i]t would have been obvious to a
person of ordinary skilled in the art at the time the invention was made to
combine the teachings of Piers and Yu with Aldritt to arrive at the instant
invention." Id.
Br. 4.
Appellants contend that
(a) one of skill in the art would not look to Piers as a starting
point because the publication fails to address animal water
consumption, and (b) the examiner has failed to provide a
sufficient rationale for why one of skill would have combined
the disclosure of Piers with Yu. Moreover, the Examiner has
failed to show that the addition of a palatant is a result-effective
variable necessary to increase the consumption of water and
that addition of a palatability agent would yield predictable
results. The Examiner has also erred by failing to adequately
consider the surprising and unexpected results disclosed by the
specification. Finally, with regard to claim 8, The Examiner's
reference to Aldritt fails to cure the deficiencies of either Piers
or Yu.
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Application 12/999,563
The issue with respect to this rejection is whether the Examiner has
established by a preponderance of the evidence that claims 1 and 3-17 are
obvious in view of Piers combined with Yu and Aldritt as defined by 35
U.S.C.
§ 103(a).
Findings of Fact
FF 1. Piers discloses an animal feed supplement in the form of a
tablet that is added to water and contains micronutrients such as vitamins.
Piers 1, 11. 5-24.
FF2. The vitamins that can be used in the tablets of Piers include
"Vitamins A, B1, B2, B6, B12, C, D, E, K, Nicotinic Acid, Folic acid, 30
Calcium Pantothenate, Choline and Biotin." Piers 1, 11. 29-30.
FF3. The tablets of Piers are "preferably effervescent so that the
tablets are self-dispersive and avoid any need for stirring or agitation." Piers
1, 11. 50-52.
FF4. The tablets of Piers may contain a binder such as acacia, malt
dextrin, ethyl cellulose or tragacanth. Piers 1, 11. 65----67.
FF5. The tablets of Piers may contain "flavourings, anti-biotics,
growth promotors (e.g. Zinc bacitracin) and anti-algal and/or anti-fungal
agents (e.g. Benzethonium Chloride or quaternary ammonium compounds)."
Piers 1, 11. 43--47.
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Application 12/999,563
FF6. Piers teaches that
A preferred effervescent substrate may contain an alkali
metal salt and an edible carboxylic acid. The alkali metal salt
may be an alkali metal bicarbonate e.g. sodium bicarbonate.
The edible carboxylic acid is preferably used in the anhydrous
form and may be e.g. citric acid, tartaric acid, malic acid or
fumaric acid.
Piers 1, 11. 53-59.
FF7. Yu discloses a high moisture palatable gel which can
significantly increase water intake by a dog or cat. Yu i-f 2.
FF8. Yu teaches that increased water consumption leads to increased
voiding which, in tum, helps reduce the risk of urinary tract infections. Yu
,-r,-r 1-2.
FF9. The gel in Yu contains at least 85 \Vt.% \vater. Yu i-f 11.
FFlO. Yu teaches that;
Generally, a palatability enhancer (flavorant) is employed
as well in order to overall enhance the palatability and
overcome any negative flavor effects the gelling agent may
have to the cat or dog. There are numerous such materials
available include animal digest, animal hydrolysates, animal
internal organs (such as liver, lungs, and heart), meats (such as
beef, lamb, pork, chicken, and turkey), sea foods (such as fish,
crab, shrimp), dairy products (such as milk and cheese), yeast,
peptides, amino acids, nucleotides, fat, oil, artificial meat and/ or
sea food flavors, maillard reactants, sugars, plant extracts, and
other aromas nature and/or artificial that are attractive to cats or
dogs.
Yu i-f 12.
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Application 12/999,563
FF 11. Yu teaches that;
Other components can be in the gel as well, for example
nutrients such as vitamins and minerals used as supplements,
preservatives, colorant(s), as well as active agents including
antibacterial agent(s), anti-inflammatory agent(s),
anti parasitic( s ), antioxidant( s ), herbal and/ or botanical extracts
and the like, all in effective quantities. Thus, the gel can
function as a delivery system for supplements as well as active
ingredients.
Yu i-f 16.
FF12. Aldritt discloses an effervescent cranberry containing
composition. Aldritt 2.
FF13. Aldritt teaches that cranberry juice is effective in treating
urinary tract infections by "inhibiting bacteria ... from attaching to and
colonizing on the walls of the urinary tract." Aldritt 1.
FF 14. Aldritt teaches that acids useful in the effervescent composition
include citric acid, tartaric acid, malic acid and fumeric acid. Aldritt 6.
FF15. Aldritt teaches that vitamins such as "ascorbic acid (vitamin
C), aspartic acid, thiamin, riboflavin, nicotinic acid, antothenic acid,
pyridoxine, biotin, folic acid, niacin, vitamin Bl2, lipoic acid, vitamin A,
vitamin D, vitamin E and vitamin K" may be added to the disclosed
composition. Aldritt 6.
FF16. Aldritt teaches the use of ethyl cellulose as a binder. Aldritt 8.
Principles of Law
"The factual predicates underlying an obviousness determination
include the scope and content of the prior art, the differences between the
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Application 12/999,563
prior art and the claimed invention, and the level of ordinary skill in the art."
In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1455 (Fed. Cir.
1998).
"Common sense has long been recognized to inform the analysis of
obviousness if explained with sufficient reasoning .... [U]se of common
sense does not require a 'specific hint or suggestion in a particular
reference,' only a reasoned explanation that avoids conclusory
generalizations." Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
1328-29 (Fed. Cir. 2009
In determining whether the subject matter of a patent
claim is obvious, neither the particular motivation nor the
avowed purpose of the patentee controls. . . . [A ]ny need or
problem known in the field of endeavor at the time of invention
and addressed by the patent can provide a reason for combining
the elements in the manner claimed.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007).
"To be particularly probative, evidence of unexpected results must
establish that there is a difference between the results obtained and those of
the closest prior art, and that the difference would not have been expected by
one of ordinary skill in the art at the time of the invention." Bristol-Myers
Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014).
Analysis
Claim 1 is representative of the claims subject to the first ground of
rejection. We agree with the Examiner that claim 1 would have been
obvious in light of the cited references. Piers discloses an effervescent tablet
used to add micronutrients to an animal's drinking water. FF 1 and 2. This
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is the same as the composition of claim 1. Piers also teaches that flavorings
can be added to the tablet. FF 3. Yu discloses the use of palatants, including
animal hydrolysates, to improve the palatability of a water containing gel.
FF 4---6. This is the same as the composition of claim 1 which calls for a
palatant comprising a hydrolyzed protein. We agree with the Examiner that
a person of ordinary skill in the art at the time the invention was made would
have combined the palatants of Yu with the effervescent tablets of Piers to
improve the palatability of the water containing micronutrients thereby
increasing consumption of the water.
Appellants argue that Piers is not an appropriate starting point for an
obviousness analysis as Piers is not directed to the same problem as the
instant claims - increasing water consumption by animals. Br. 4--7. We
disagree. The specific problem that the applicant seeks to address does not
control whether a reference is relevant or analogous. See, KSR Int 'l Co.,
550 U.S. at 419-20 ("in determining whether the subject matter of a patent
claim is obvious, neither the particular motivation nor the avowed purpose
of the patentee controls."). Like the instant claims, Piers is directed to the
use of an effervescent compound in an animal's drinking water. Both Piers
and the instant claims are directed to water consumption by animals. FF 1
and Spec. i-f 1. In addition, as the Examiner pointed out, several of the
instant claims are directed to delivery of micronutrients in an animal's
drinking water, the same as Piers. Ans. 9. We agree with the Examiner
that Piers is analogous art to the claimed invention.
Appellants next argue that the Examiner has not provided a sufficient
rationale for combining the teachings of Yu with Piers. Br. 7-11. We find
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this argument unpersuasive. Piers discloses an effervescent tablet containing
micronutrients to disperse the micronutrients in water for consumption by
animals. FF 1-2. Piers also discloses that the tablets may contain
flavorings. FF 5. Common sense dictates that one skilled in the art would
recognize that the purpose of adding a flavoring is to increase palatability.
Yu teaches that the addition of palatants, such as animal hydrolysates, makes
a high water composition more palatable to animals. FF 7-10. Thus the
teachings of the references would lead one skilled in the art to use the
palatants of Yu in the effervescent tablets of Piers to make the water
containing micronutrients palatable thereby increasing the consumption of
the micronutrient containing water.
Appellants go on to argue that the Examiner has failed to show that
the addition of a palatant is a "result effective variable necessary to increase
the consumption of water and that the addition of a palatability agent would
yield predictable results." Br. 11-13. Again, we are unpersuaded. As
discussed above, Piers specifically teaches the addition of a flavoring to the
effervescent tablet. FF 5. One skilled in the art would thus recognize that
flavorings are commonly added to food products to improve palatability so
as to increase consumption. Yu teaches that the consumption of water can
be increased not only by the use of a gelling agent but through the use of
palatants such as animal hydrolysates. FF 10. Thus the references both
teach that adding flavorings or palatants is a variable which can be effective
in increasing the consumption of water. One skilled in the art, reading the
references, would have a reasonable expectation that the addition of
palatants would result in increased water consumption.
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Appellants go on to argue that the Examiner failed to adequately
consider the evidence of unexpected results. Br. 13-14. While we are
unsure of the Examiner's reasoning that the results shown in the present
examples are merely cumulative, we agree that the examples are not
persuasive. To rebut a prima facie case of obviousness, the invention should
be compared with the closest prior art. Bristol-Myers Squibb Co., Inc., 752
F.3d at 977. Here, the closest prior art is Piers which discloses the use of an
effervescent tablet in an animal's drinking water. FF 1-3. None of the
examples in the specification compare the claimed composition with water
treated with an effervescent agent alone. Thus the evidence of unexpected
results does not compare the claimed invention to the closest prior art and
does not rebut the finding of obviousness.
Turning to the Examiner's rejection of claim 8 over Aldritt, Piers, and
Yu, Appellants argue that Aldritt does not cure the deficiencies of Piers and
Yu. Br. 14-15. Appellants also argue that Aldritt appears to be limited to
treating urinary tract infections in humans and that the Examiner has not
shown its applicability to non-humans. Id. These arguments are
unpersuasive. As the Examiner has noted, Aldritt has only been offered to
show the use of cranberry juice to treat urinary tract infections. Ans. 13.
Moreover, as demonstrated above, Piers and Yu fully teach all of the
elements of clam 1 and all the elements of claim 8 with the exception of
cranberry juice. There is no need to rely on Aldritt to cure deficiencies in
the references other than the teaching to use cranberry juice. Moreover,
both Piers and Yu teach inclusion of antibiotic components in their
compositions. FF 5 and 11. Yu specifically teaches the desirability of
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treating urinary tract infections. FF 8. Aldritt teaches that cranberry extracts
can be effective in treating urinary tract infections. FF 13. One skilled in
the art would have been motivated to use cranberry juice as the antibiotic of
Piers or Yu to treat or prevent urinary tract infections.
With respect to the applicability of Aldritt to non-human foods, while
some human food components are not useful in non-human foods, as shown
by the references, many human food ingredients can also be used in non-
human foods. For example, both Piers and Aldritt teach that citric, tartaric,
malic or fumaric acids can be used as part of the effervescent composition.
FF 6 and 14. The vitamins that can be included in both Piers and Aldritt
overlap. FF 2 and 15. Both Piers and Aldritt use ethyl cellulose as a binder.
FF 4 and 16. The references suggest that the ingredients used in the
effervescent tablets of Piers and Aldritt can be used for both humans and
non-humans. Moreover, we see nothing in the references and Appellants
have offered no evidence to show that one skilled in the art would not use
cranberry juice as a non-human food ingredient. We conclude that one
skilled in the art, reading the references, would appreciate that the cranberry
composition of Aldritt could be used for non-humans as well as humans.
Conclusion of Law
We conclude that the Examiner has established by a preponderance of
the evidence that claims 1 and 8 are obvious in view of Piers combined with
Yu alone or Piers combined with Yu and Aldritt as defined by 35 U.S.C.
§ 103(a).
Claims 3-7 and 9-17 have not been argued separately and therefore
fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
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SUMMARY
We affirm the rejections of claims 1 and 3-17.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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