Ex Parte Mercenier et al

Patent Trial and Appeal Board

Mar 16, 2017

13319477 (P.T.A.B. Mar. 16, 2017)

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.
13/319,477 01/12/2012 Annick Mercenier 3712036-01428 4966
29157 7590 03/20/2017
K&T Oates T T .P-Phiraan
EXAMINER
P.O. Box 1135
CHICAGO, IL 60690
VISONE, THOMAS J
ART UNIT PAPER NUMBER
1651
NOTIFICATION DATE DELIVERY MODE
03/20/2017 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANNICK MERCENIER, SOPHIE NUTTEN, and
GUENOLEE PRIOULT1
Appeal 2015-001440
Application 13/319,477
Technology Center 1600
Before JOHN G. NEW, JOHN E. SCHNEIDER,
and TIMOTHY G. MAJORS, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a milk
composition that contains probiotics, which have been rejected as obvious
and for obviousness-type double patenting. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as Nestec, S.A. (Appeal Br.
2.)
Appeal 2015-001440
Application 13/319,477
STATEMENT OF THE CASE
The Specification describes a milk product containing probiotics to be
fed to infants and children over ten months old. Spec 1,11. 3—6. The
probiotics may be non-replicating probiotic micro-organisms that have been
heat treated. Spec. 1,11. 6—8.
Claims 1—8, 10, 12, 13 and 15 are on appeal. Claim 1 is the sole
independent claim and reads as follows:
1. Growing-up-milk composition comprising probiotic micro­
organisms to be administered to infants or young children
starting at the age of 10 months, the probiotic micro-organisms
have been rendered non-replicating by a heat treatment having
conditions selected from the group consisting of 1) a
temperature exceeding 135 °C for 1-10 seconds and 2) a
temperature from 71.5 °C to 74 °C for 15-30 seconds, and the
probiotic micro-organisms are selected from the group
consisting of Bifidobacterium longum NCC 3001 (deposit
number ATCC BAA-999), Bifidobacterium longum NCC 2705
(deposit number CNCM 1-2618), Bifidobacterium breve NCC
2950 (deposit number CNCM 1-386), Bifidobacterium lactis
NCC 2818 (deposit number CNCM 1-3446), Lactobacillus
johnsonii Lai (deposit number CNCM 1- 1225), Lactobacillus
paracasei NCC 2461 (deposit number CNCM 1-2116),
Lactobacillus rhamnosus NCC 4007 (deposit number CGMCC
1.3724), Lactobacillus reuteri DSM 17938, Lactobacillus
reuteri ATCC55730, Streptococcus thermophilus NCC 2019
(deposit number CNCM 1-1422), Streptococcus thermophilus
NCC 2059 (deposit number CNCM 1-4153), Lactobacillus
casei NCC 4006 (deposit number CNCM 1-1518),
Lactobacillus acidophilus NCC 3009 (deposit number ATCC
700396), Lactobacillus casei ACA-DC 6002 (NCC 1825
deposit number ACA-DC 6002), Escherichia coli Nissle
(deposit number DSM 6601), Lactobacillus
bulgaricus NCC 15 (deposit number CNCM 1-1198),
Lactococcus lactis NCC 2287 (deposit number CNCM 1-4154),
and combinations thereof.
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Appeal 2015-001440
Application 13/319,477
The claims stand rejected as follows:
Claims 1—3, 5, 6, 8, 12, 13, and 15 have been rejected under 35 U.S.C.
§ 103(a) as unpatenable over McMahon2 in view of Kamarel3 and in further
view of Arigoni4 and Donnet-Hughes5 as evidenced by Sprenger.6
Claim 4 has been rejected under 35 U.S.C. § 103(a) as unpatenable
over McMahon in view of Kamarel, Arigoni, Donnet-Hughes and Sprenger
in further view of Secretin.7
Claims 7 and 10 have been rejected under 35 U.S.C. § 103(a) as
unpatenable over McMahon in view of Kamarel, Arigoni, Donnet-Hughes
and Sprenger in further view of Kohk.8
Claims 1—8, 10, 12, 13, and 15 have been provisionally rejected on the
grounds of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1—3, 5—8, and 10-16 of copending Application No.
13/319,964; claims 10-11 of copending Application No. 13/319,963 (now
abandoned); claims 1—8, 10, and 12—17 of copending Application No.
13/319,959 (now US 8,691,214 B2); claims 1—8, 10, 12—15, and 17 of
2 McMahon et al., US 2008/0206212 Al, published Aug. 28, 2008
(“McMahon”).
3 Kamarel, US 6,194,009 Bl, issued Feb. 27, 2001 (“Kamarel”).
4 Arigoni et al., US 2004/0126870 Al, published July 1, 2004 (“Arigoni”).
5 Donnet-Hughes et al., WO 2006/108824 Al, published Oct 19, 2006
(“Donnet-Hughes”).
6 Sprenger et al., US 2009/0041736 Al, published Feb. 12, 2009
(“Sprenger”).
7 Secretin, WO 2004/112507 Al, published Dec. 29, 2004 (“Secretin”)
8 Kohk et al., Comparative physio-chemical changes in some constituents of
special milks and dahi obtained from them, 33 Indian J. Dairy Sci. 219
(1980) (Abstract only) (“Kohk”).
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Appeal 2015-001440
Application 13/319,477
copending Application No. 13/319,947 (now abandoned); claims 1—8, 10,
and 12—16 of copending Application No. 13/319,943 (now abandoned);
claims 1—8 and 10—15, of copending Application No. 13/319,941 (now
abandoned); claims, 1—8, 10, and 12—15 of copending Application No.
13/319,653 (now abandoned); claims 1—8, 10, and 12—15 of copending
Application No. 13/319,651 (now US 8,196,374); claim 15 of copending
Application No. 13/319,649 (now US 8,784,798 B2); claims 1—8, 10, and
12—15 of copending Application No. 13/319,638 (now abandoned); claims
13 and 15 of copending Application No. 13/319,632; claims 1-4, 6, 12—15,
24—27 of copending Application No. 13/319,627 (now US 9.375,454 B2);
claims 1-9, and 16 of copending Application No. 13/319,625; and claims
22—26, and 30—36 of copending Application No. 13/283,778 (now
abandoned).
Claims 1—8, 10, 12, 13, and 15 are rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1-6 and 10-17 of US 7,179,460 B2.
THE OBVIOUSNESS REJECTIONS
Claims 1—3, 5, 6, 8, 12, 13, and 15
The issue with respect to this rejection is whether the evidence of
record supports the Examiner’s conclusion that claims 1—3, 5, 6, 8, 12, 13,
and 15 would have been obvious over McMahon combined with Kamarel,
Arigoni, Donnet-Hughes and Sprenger.
The Examiner finds that McMahon discloses an infant formula
comprising inactivated probiotic bacteria from the genera Lactobacillus,
Bifidobacterium, Lactococcus, and Escherichia. Final Act. 2. The
Examiner finds that McMahon teaches that the probiotics can be inactivated
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Appeal 2015-001440
Application 13/319,477
by heat treatment, lyophilization, UV light, gamma radiation, pressure, or
chemical or mechanical disruption. Id. The Examiner finds that while
McMahon does not teach inactivation using the temperatures and times
recited in the instant claims, Kamarel discloses Ultra High Temperature
(“UHT”) treatment of infant formula at 135° to 150° C from 2 to 5 seconds.
Final Act. 3. With respect to the specific strains of probiotics recited in the
instant claims, the Examiner finds that Arigoni and Donnet-Hughes teach at
least two of the strains recited in the claims. Final Act. 3^4. The Examiner
concludes that “one of ordinary skill in the art would be motivated to
inactivate the probiotics taught by McMahon using the art recognized UHT
parameters taught by Kamarek [sic] in order to ensure proper inactivation.”
Final Act. 3. The Examiner also reasons that “it would have been a matter
of routine optimization using standard techniques available at the time of
invention to ensure at least 90% inactivation of the bacteria and to determine
the optimal nutrient concentrations in the composition taught by McMahon
and Kamarel.” Id.
Appellants contend that one skilled in the art would not be motivated
to combine the teachings of McMahon with those of Kamarel. Appeal Br.
8—9. Appellants also contend that none of the references teach or suggest
that heat treatment of the specific strains recited in the claims would result in
inactive strains that retained the same biological reactive attributes as live
strains. Appeal Br. 9. Appellants argue that there is sufficient evidence of
unexpected results to overcome a prima facie case of obviousness. Appeal
Br. 10-14.
The evidence of record supports the Examiner’s position. McMahon
teaches an infant formula comprising probiotic bacteria that have been
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Application 13/319,477
inactivated. McMahon 13. The inactivation can be achieved through heat
treatment. Id. fl\. Kamarel discloses UHT as a method to kill or inactivate
bacteria in infant formulas. Kamarel col. 3,11. 54—61. Similarly Kohk
teaches pasteurization at 71.5° C for 15 seconds. Kohk Abstract. We agree
with the Examiner that “one of ordinary skill in the art would find it
advantageous, since McMahon broadly teaches the use of heat treatment, to
utilize a well-established heat treatment method, such as pasteurization by
UHT or HTST, to inactivate the probiotics.” Ans. 9.
Appellants contend that the properties of probiotics are strain specific
and that one skilled in the art would not expect the teaching of McMahon to
be applicable to the strains taught in Arigoni and Donnet-Hughes. Appeal
Br. 9. We are unpersuaded. As the Examiner points out, McMahon teaches
the use of inactivated bacteria from the genus Lactobacillus. Ans. 11.
Donnet-Hughes teaches a specific strain of Lactobacillus is especially useful
for promoting immune function. Id. We thus agree with the Examiner that
the references provide a motivation to combine the teachings of the
references. Id.
With respect to Appellants’ arguments regarding unexpected results,
we agree with the Examiner that the data in the Specification is insufficient
to overcome the Examiner’s rejection.
[T]he short time/high temperature heat treatments constitute
well known pasteurization techniques such as UHT and HTST.
Thus, any unexpected result offered by Appellant must also be
inherently present in the prior art. It is well established that
“the discovery of a previously unappreciated property of a prior
art composition, or of a scientific explanation for the prior art's
functioning, does not render the old composition patentably
new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190
F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).
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Application 13/319,477
Thus the claiming of a new use, new function or unknown
property which is inherently present in the prior art does not
necessarily make the claim patentable. In re Best, 562 F.2d
1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Ans. 12.
Appellants argue that at the time of the invention, probiotics were
added after pasteurization and that this distinguished the present product
from the prior art. Appeal Br. 13—14. We agree with the Examiner that this
argument is not consistent with the scope of the claims. Ans. 14. Nothing in
the claims dictates when the probiotics are rendered inactive.
Appellants argue that, with respect to claim 5, the references do not
teach or suggest a heat treatment exceeding 135° C for 1—10 seconds.
Appeal Br. 14—15. We agree with the Examiner that the references contain
such a teaching. Kamarel teaches UHT treatment of the composition at from
135 to 150° C for 2 to 5 seconds. This falls within the range cited in claim
5.
With respect to claim 8, Appellants argue that none of the cited
references “[sjuggest that heat treatment by UHT-like treatment can generate
anti-inflammatory profiles from non anti-inflammatory live strains.” Appeal
Br. 15—16. Here again, Appellants are arguing limitations that are not in the
claims. Moreover, as the Examiner explains “Donnet- Hughes teaches that
Lactobacillus rhamnosus NCC 4007 is a well-known probiotic that
advantageously promotes immune function and McMahon teaches use of
inactivated probiotic bacteria from the genera Lactobacillus. It is also noted
that, as discussed above, the heat inactivation methods (e.g., UHT and
HTST) taught by the prior art would inherently impart the anti-inflammatory
profiles of the claimed invention.” Ans. 16.
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Appeal 2015-001440
Application 13/319,477
Claim 4
Claim 4 adds the limitation that the composition of claim 1 comprises
1.5 —2.5 mg nucleotides per 100 mL of formula. Appeal Br. 22 (Claims
App.) The Examiner finds that Secretin teaches an infant formula
containing 2-5 mg nucleotides per 100 mL of formula. Final Act. 4—5. The
Examiner concludes that one skilled in the art would modify the composition
taught by McMahon, Kamarel, Arigoni, Donnet-Hughes and Sprenger to
incorporate the teachings of Secretin to ensure the nutritional needs of the
recipient are met. Id.
Appellants’ sole argument with respect to this rejection is that
Secretin does not remedy the deficiencies of the other references with
respect to heat treatment. As discussed above, we do not find the references
to be deficient in their teachings. Thus Appellants’ argument is
unpersuasive.
Claims 7 and 10
With respect to claims 7 and 10, the Examiner finds that, in addition
to the teachings of McMahon, Kamarel, Arigoni, Donnet-Hughes and
Sprenger, Kohk teaches pasteurization at 71.5° C for 15 seconds which falls
within the range cited in the claims. Final Act. 5—6. The Examiner finds
that it would have been obvious to use the heat treatment in Kohk to
inactivate probiotic bacteria as taught by McMahon. Id.
Appellants essentially reiterate the arguments made above. For the
reasons stated above, we find the arguments unpersuasive.
Conclusion of Law
We conclude that the evidence of record supports the Examiner’s
rejections under 35 U.S.C. § 103(a).
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Appeal 2015-001440
Application 13/319,477
THE OBVIOUSNESS-TYPE DOUBLE PATENTING REJECTIONS
Analysis
Appellants have offered no arguments with respect these rejections
and have therefore waived their appeal of the rejections. We therefore
affirm the rejections.
SUMMARY
We affirm the rejections under 35 U.S.C. § 103(a).
We affirm the rejections under non-statutory obviousness-type double
patenting.
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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