Ex Parte Nash et al

Board of Patent Appeals and Interferences

Nov 23, 2009

11085674 (B.P.A.I. Nov. 23, 2009)

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.
11/085,674 03/21/2005 Peter Nash C150.12.3E 3467
7590 11/23/2009
Southdale Office Centre
Suite 350
6750 France Avenue South
Edina, MN 55435
EXAMINER
HUYNH, PHUONG N
ART UNIT PAPER NUMBER
1644
MAIL DATE DELIVERY MODE
11/23/2009 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PETER NASH, DONALD L. ROBINSON as legal representative
of JOHN W. ROSEVEAR (deceased), and DONALD L. ROBINSON
__________

Appeal 2009-008892
Application 11/085,674
Technology Center 1600
__________

Decided: November 23, 2009
__________

Before DONALD E. ADAMS, ERIC GRIMES, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of reducing the incidence of food-borne illness, which the Examiner has
rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
Appeal 2009-008892
Application 11/085,674

2
STATEMENT OF THE CASE
Claims 1, 3, 5, 6, 8, 9, 11, 12, and 14-16 are pending and on appeal.
Claim 1 is representative and reads as follows:
1. A method for reducing or eliminating the incidence of illnesses in
humans caused by the presence of targeted colony-forming illness-causing
immunogens from the group consisting of E. coli 0157:H7, Listeria,
Salmonella and Campylobacter in meat by inhibiting the ability of the
immunogens to adhere to the rumen or intestinal tracts of food animals to
reduce the ability of the immunogens to multiply in the rumen or intestinal
tracts of the food animals, said method comprising:
A. Inoculating female chickens, in or about to reach their egg
laying age, with a targeted colony-forming illnesses-causing
immunogen from the group consisting of E. coli 0157:H7, Listeria,
Salmonella and Campylobacter;
B. Allowing a period of time sufficient to permit the production
in the eggs of the chickens of antibody to the targeted colony-forming
illness-causing immunogen, said antibody in the eggs including IgY
immunoglobulins in the yolks of the eggs and IgM and IgA
immunoglobulins in the albumin of the eggs;
C. Harvesting the eggs laid by the chickens;
D. Separating the entire contents of said harvested eggs from
the shells;
E. Providing a dry carrier material;
F. Coating the dry carrier material with said entire contents of
said harvested eggs;
G. Mixing the resulting carrier material coated with the egg
antibody product substantially uniformly with an animal feed or
water; and
H. Supplying the resulting mixed carrier material coated with
the egg antibody product and animal feed or water to food animals
whereby the IgY immunoglobulins bind to the targeted colony-
forming illness-causing immunogen in the intestinal tracts of food
animals, said binding being assisted by the IgM and IgA
immunoglobulins to inhibit adherence of the targeted colony-forming
illness-causing immunogen in the intestinal tracts of the food animals
thereby reducing or eliminating the incidence of food borne illnesses
Appeal 2009-008892
Application 11/085,674

3
in humans caused by the presence of the targeted colony-forming
illness-causing immunogen in meat.

The claims stand rejected under 35 U.S.C. § 103(a) as follows:
• Claims 1, 3, 6, 9, 12, and 15 as obvious in view of Zúñiga,1
Adalsteinsson,2 Schiemann,3 Pell,4 and Pimentel5 (Ans. 5);
• Claims 1, 3, 6, 9, 12, and 15 as obvious in view of Tokoro,6
Adalsteinsson, Schiemann, Pell, and Pimentel (Ans. 11);
• Claims 5, 8, 11, 14, and 16 as obvious in view of Zúñiga,
Adalsteinsson, Schiemann, Pell, Pimentel, Enueme,7 Grasser,8 and Betz9
(Ans. 8); and

1 Armando Zúñiga et al., Reduced intestinal colonisation with F18 positive
enterotoxigenic Escherichia coli in weaned pigs fed chicken egg antibody
against the fimbriae, 18 FEMS IMMUNOL. MED. MICROBIOL. 153-161
(1997).
2 Adalsteinsson et al., US 6,086,878, July 11, 2000.
3 D.A. Schiemann et al., Immune responses in chickens against Salmonella
typhimurium monitored with egg antibodies, 27 VET. MICROBIOL. 295-308
(1991).
4 Alice N. Pell et al., Manure and Microbes: Public and Animal Health
Problem?, 80 J. DAIRY SCI. 2673-2681 (1997).
5 Pimentel et al., US 5,741,489, Apr. 21, 1998.
6 Tokoro, US 5,080,895, Jan. 14, 1992.
7 JE Enueme et al., Use of peat as a bedding material and dietary component
for tom turkeys, 66 POULT. SCI. 1508-16 (Sept. 1987) (Abstract).
8 L.A. Grasser et al., Quantity and Economic Importance of Nine Selected
By-Products Used in California Dairy Rations, 78 J. DAIRY SCI. 962-971
(1995).
9 Betz et al., US 4,166,867 Sept. 4, 1979.
Appeal 2009-008892
Application 11/085,674

4
• Claims 5, 8, 11, 14, and 16 as obvious in view of Tokoro,
Adalsteinsson, Schiemann, Pell, Pimentel, Enueme, Grasser, and Betz (Ans.
15).
OBVIOUSNESS – CLAIMS 1, 3, 6, 9, 12, and 15
Issue
The Examiner has rejected claims 1, 3, 6, 9, 12, and 15 as obvious in
view of Zúñiga, Adalsteinsson, Schiemann, Pell, and Pimentel (Ans. 5).
Based on a similar rationale, the Examiner has also rejected claims 1, 3, 6, 9,
12, and 15 as obvious in view of Tokoro, Adalsteinsson, Schiemann, Pell,
and Pimentel (Ans. 11).
The Examiner finds that Zúñiga and Tokoro both teach a method of
reducing incidence of diarrhea in livestock by inoculating chickens with an
E. coli immunogen, collecting eggs, drying the egg contents, and feeding the
egg powder to livestock (Ans. 5, 11). The Examiner finds that
Adalsteinsson teaches a similar method and “teaches the dried egg powder
can be mixed with food animal feed rations or sprayed directly onto food
pellets (carrier) and then fed directly to food animals” (id. at 6, 12). The
Examiner finds that Pimentel provides a similar disclosure of egg antibodies
mixed with ground corn as the carrier, then mixed with feed (id. at 7, 13).
The Examiner finds that Schiemann provides motivation to modify
the prior art method to target immunogens from Salmonella and Pell
provides motivation to target the prior art method to E. coli O157:H7,
Listeria monocytogenes, Salmonella or Campylobacter (id. at 6, 13).
The Examiner concludes that it would have been obvious to modify
the method taught by either Zúñiga or Tokoro to target E. coli O157:H7,
Appeal 2009-008892
Application 11/085,674

5
Listeria monocytogenes, Salmonella, and Campylobacter because
Schiemann and Pell teach that those bacteria cause illness in humans, and to
modify Zúñiga’s or Tokoro’s method by coating the egg contents onto a
carrier material, as taught by Adalsteinsson and Pimentel, before mixing it
with animal feed (id. at 7, 13-14).
Appellants contend that “[t]here is no teaching in the prior art of
coating dry carrier material with the entire contents of the eggs without first
drying the egg into a powder” (Appeal Br. 18).
The issue with respect to this rejection is: Have Appellants shown
that the Examiner erred in concluding that the method of claim 1 would have
been obvious, because the cited references do not teach coating carrier
material with undried egg contents?
Findings of Fact
1. Zúñiga discloses that E. coli can cause diarrhea and enterotoxemia
(ECET) in pigs (Zúñiga 153, left col.).
2. Zúñiga discloses inoculating chickens with an E. coli antigen and,
after a period of time, harvesting eggs from the chickens (id. at 154, right
col.).
3. Zúñiga discloses that whole egg contents were spray-dried (id.),
mixed with feed, and fed to pigs (id. at 156, left col.).
4. Zúñiga reports that its “study confirms earlier reports on the
efficacy of chicken egg yolk antibodies for reduction of intestinal
colonisation by ETEC [sic, ECET?] in weaned pigs” (id. at 160, left col.).
5. Tokoro discloses that “porcine ETEC (enterotoxigenic E. coli) is
known to cause diarrhea in pigs” (Tokoro, col. 8, ll. 53-54).
Appeal 2009-008892
Application 11/085,674

6
6. Tokoro discloses “immunization of a hen against a selected
antigen” (id. at col. 5, l. 29) such as “a bacterium which causes intestinal
infectious diseases such as colibacillosis in calves or piglets” (id. at col. 6, ll.
38-39).
7. Tokoro discloses that, after a period of time, eggs from the
immunized hens are collected and “the yolk or albumen or the overall ovum
of each egg is separated” (id. at col. 5, l. 67 to col. 6, l. 9).
8. Tokoro discloses that the egg contents are homogenized and can be
dried to form a powder, which is useful as an additive for livestock or
poultry feed (id. at col. 6, ll. 19-24 and 48-49).
9. Adalsteinsson discloses feeding animals a composition comprising
chicken eggs containing antibodies that bind a gastrointestinal neuro-
modulator, such as cholecystokinin (Adalsteinsson, col. 4, l. 58 to col. 5, l.
10).
10. Adalsteinsson discloses that “the egg itself . . . either functions as,
or [can] be processed into a food product. One preferred method for
preparing the egg to be processed into a food product involves drying the
egg into an egg powder.” (Id. at col. 9, ll. 25-31.)
11. Adalsteinsson discloses that the “dried egg powder can be mixed
with food animal feed rations or sprayed directly onto food pellets preferably
in oil and thus fed directly to food animals in a simple fashion” (id. at col. 9,
ll. 37-39).
12. Adalsteinsson discloses that “[a]lternatively, whole eggs may be
administered to the subject animal or if desired the whole egg can be eaten
raw” (id. at col. 9, ll. 61-62).
Appeal 2009-008892
Application 11/085,674

7
13. Schiemann discloses that hens immunized with an avirulent
mutant of Salmonella typhimurium produced antibodies to S. typhimurium in
their eggs (Schiemann 295 (abstract)).
14. Pell discloses that “[p]athogen contamination of the water and
food supplies recently has received national attention because of the
presence of Escherichia coli O157:H7 in hamburgers [and] Salmonella spp.
in ice cream and eggs” (Pell 2673).
15. Pell discloses that “bacteria including Salmonella spp., E. coli
O157:H7, [and] Listeria monocytogenes . . . in the food and water supply
can cause these headline-grabbing outbreaks” (id.).
16. Pell discloses that “Campylobacter jejuni . . . pose[s] significant
risks to human health” (id.).
17. Pimentel discloses that “[a]ntibodies have been reported to be
more resistant to degradation by gastric acidity when they are contained in
the spray-dried whole egg, as compared to purified spray-dried antibodies”
(Pimentel, col. 2, ll. 35-38).
18. Pimentel discloses feeding whole, spray-dried, antibody-
containing eggs to pigs (id. at col. 5, ll. 50-57).
19. Pimentel discloses that egg-derived “antibody extract was mixed
with 1 kilogram fine ground corn and then mixed with one metric ton feed”
(id. at col. 5, ll. 1-2).
Principles of Law
“The transition ‘comprising’ in a method claim indicates that the
claim is open-ended and allows for additional steps.” Invitrogen Corp. v.
Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003).
Appeal 2009-008892
Application 11/085,674

8
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000).
“[W]hile it is true that claims are to be interpreted in light of the
specification and with a view to ascertaining the invention, it does not follow
that limitations from the specification may be read into the claims.” Sjolund
v. Musland, 847 F.2d 1573, 1581 (Fed. Cir. 1988).
The test of obviousness is “whether the teachings of the prior art,
taken as a whole, would have made obvious the claimed invention.” In re
Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991).
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole.”
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Analysis
Zúñiga and Tokoro disclose a method of inhibiting bacterial growth
(e.g., of intestinal E. coli) in livestock by inoculating chickens with a
bacterial immunogen, collecting eggs after the chickens have developed
antibodies against the immunogen, separating the contents of the eggs from
the shells, drying the egg contents, mixing the egg powder with animal feed,
and feeding the mixture to the animals to be treated (FFs 1-8).
Adalsteinsson discloses that antibody-containing egg powder can be
coated on food pellets or, “[a]lternatively, whole eggs may be administered
to the subject animal or if desired the whole egg can be eaten raw” (FFs 11-
Appeal 2009-008892
Application 11/085,674

9
12). Pimentel discloses feeding egg-derived antibodies to pigs by mixing an
antibody-containing extract with fine ground corn – a carrier – and mixing
the corn with pig feed (FF 19).
Pell discloses that the presence in food and water supplies of
Escherichia coli O157:H7, Salmonella, Listeria monocytogenes, and
Campylobacter jejuni is a human health risk (FFs 14-16). Schiemann
discloses that inoculating chickens with Salmonella typhimurium causes
them to develop antibodies to the bacterium and those antibodies are
deposited in the chickens’ eggs (FF 13).
We agree with the Examiner that, based on the teachings of the cited
references, a person of ordinary skill in the art would have considered it
obvious to modify the method taught by either Zúñiga or Tokoro to target
the food-borne pathogens Escherichia coli O157:H7, Salmonella, Listeria
monocytogenes, and Campylobacter jejuni in livestock, in order to reduce
the likelihood that the meat produced from the livestock would be
contaminated with the pathogens. We also agree that it would have been
obvious to modify Zúñiga’s or Tokoro’s method by coating the antibody-
containing egg contents onto a carrier, such as corn, before mixing it with
animal feed, because Pimentel teaches that doing so was an art-recognized
method of evenly mixing a small quantity of antibody-containing substance
with a large quantity of animal feed.
Appellants argue that “[h]eat, vacuum spraying and other methods of
drying the eggs is not used in Appellants’ method” (Appeal Br. 17) and
“[t]here is no teaching in the prior art of the absence of drying the egg
contents and coating dry carrier material with non-dried egg contents” (id.).
Appeal 2009-008892
Application 11/085,674

10
This argument is not persuasive. The Examiner concludes that
coating a carrier material with non-dried egg contents would have been an
obvious variation of the prior art method (Ans. 18), but we find it
unnecessary to decide that issue because the claims read on coating a carrier
with a dried egg powder.
The claims on appeal use the transition term “comprising,” meaning
that the claims are not limited to the recited steps, but encompass methods
that include the recited steps and any other steps. The claims therefore read
on a process that includes a step of drying the egg contents, after harvesting
the egg contents and before coating them on a carrier material, as disclosed
by Adalsteinsson.
Appellants also argue that none of Zúñiga, Tokoro, Adalsteinsson,
Pell, Pimentel, or Schiemann individually discloses all the limitations of the
rejected claims (Appeal Br. 18-20, 24-26). The rejections, however, are
based on the combined teachings of the references; “[n]on-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.” In re
Merck & Co., 800 F.2d at 1097.
Conclusion of Law
Because the claims on appeal are not limited to coating a carrier with
undried egg contents, Appellants have not shown that the Examiner erred in
concluding that the method of claim 1 would have been obvious in view of
the cited references.
Appeal 2009-008892
Application 11/085,674

11
OBVIOUSNESS – CLAIMS 5, 8, 11, 14, and 16
The Examiner has rejected claims 5, 8, 11, 14, and 16 under 35 U.S.C.
§ 103(a) based on either Zúñiga or Tokoro, combined with Adalsteinsson,
Schiemann, Pell, Pimentel, Enueme, Grasser, and Betz. Claims 5, 8, 11, 14,
and 16 add the limitation that the dry carrier material is “soybean hulls, rice
hulls, corn, cottonseed hulls, distilled dried grains [or] beet pulp” (e.g., claim
5). The Examiner finds that Enueme, Grasser, and Betz teach that the
recited carrier materials are commonly added to livestock feed (Ans. 9, 15)
and concludes that it would have been obvious to use them as the carrier in
the method suggested by Zúñiga or Tokoro, combined with Adalsteinsson,
Schiemann, Pell, and Pimentel (Ans. 10, 16)
We agree with the Examiner that the cited references would have
made obvious the claimed method, although we do not consider it necessary
to address the teachings of Enueme, Grasser, and Betz. Each of claims 5, 8,
11, 14, and 16 includes corn as a dry carrier material, which is expressly
taught by Pimentel as a carrier suitable for mixing with an antibody-
containing composition before mixing the coated carrier with animal feed
(FF 19). Therefore, a person of ordinary skill in the art would have
considered it obvious to use corn as a carrier material in the method
suggested by Zúñiga or Tokoro, combined with Adalsteinsson, Schiemann,
Pell, and Pimentel.
Appellants argue that none of the additional references teach the
claimed method and the prior art does not teach coating a carrier material
with egg contents without first drying the egg contents (Appeal Br. 21-22,
27). These arguments are not persuasive for the reasons discussed above.
Appeal 2009-008892
Application 11/085,674

12
SUMMARY
We affirm the rejection of claims 1, 3, 6, 9, 12, and 15 under 35
U.S.C. § 103(a) as obvious in view of either of Zúñiga or Tokoro, combined
with Adalsteinsson, Schiemann, Pell, and Pimentel. We affirm the rejection
of claims 5, 8, 11, 14, and 16 under 35 U.S.C. § 103(a) as obvious in view of
either of Zúñiga or Tokoro, combined with Adalsteinsson, Schiemann, Pell,
Pimentel, Enueme, Grasser, and Betz.
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

lp

SOUTHDALE OFFICE CENTRE
SUITE 350
6750 FRANCE AVENUE SOUTH
EDINA MN 55435