Ex Parte Vazquez-Anon et al

Patent Trial and Appeal Board

Sep 12, 2013

11674916 (P.T.A.B. Sep. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MERCEDES VÁZQUEZ-AÑÓN and GAVIN R. BOWMAN
__________

Appeal 2012-002916
Application 11/674,916
Technology Center 1600
__________

Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a method
for increasing ruminal nutrient digestion. The Examiner rejected the claims
as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

1 Appellants identify the Real Party in Interest as Novus
International, Inc. (See App. Br. 1.)
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Statement of the Case
Background
“The present invention generally provides combinations of
antioxidants for use in ruminant feed rations. The antioxidant combinations,
when fed to ruminant animals, reduce the formation of free radicals in the
diet, improve nutrient digestion, and optimize fermentation in the rumen of
the animal” (Spec. 1 ¶ 0002).
The Claims
Claims 1-4, 7, 12-14, 16-29, and 36 are on appeal. Claim 1 is
representative2 and reads as follows:
1. A method for increasing ruminal nutrient digestion in a
ruminant animal that either has been, or may be, fed a ration
comprising a fat source, the method comprising (a) adding to a final
diet a first antioxidant, the first antioxidant being a quinoline
compound, and a second antioxidant that is different than the first
antioxidant; and (b) feeding to a ruminant animal the final diet
comprising the first antioxidant and the second antioxidant, wherein
the feeding of the first and second antioxidant to the ruminant animal
increases ruminal nutrient digestion in the ruminant animal.

The issues
A. The Examiner rejected claims 1-4, 7, 12-14, and 17-29 under 35
U.S.C. § 103(a) as obvious over Barclay,3 Higgs,4 Selm,5 and Linn6 (Ans. 5-
12).

2 “For the purposes of this Appeal, claims 1-4, 7, 12-14, 16-29, and
36 are under appeal and are submitted to stand or fall together”
(App. Br. 3).
3 Barclay, W., 5,698,244, issued Dec. 16, 1997.
4 Higgs et al., 6,955,831 B2, issued Oct. 18, 2005.
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B. The Examiner rejected claim 16 under 35 U.S.C. § 103(a) as obvious
over Barclay, Higgs, Selm, Linn, and Vinci7 (Ans. 13-14).
C. The Examiner rejected claim 36 under 35 U.S.C. § 103(a) as obvious
over Barclay, Higgs, Selm, Linn, and Palmquist8 (Ans. 14-15).
A. 35 U.S.C. § 103(a) over Barclay, Higgs, Selm, and Linn
The Examiner finds that “Barclay teaches a method of raising animals
which includes cattle comprising feeding the animal omega-3-HUFA's
[highly unsaturated fatty acids] which gets incorporated into the flesh, eggs
and milk products from the animals” (Ans. 6). The Examiner finds that:
Barclay teaches fatty acids, such as the HUFA, when
exposed to oxidizing conditions, can be converted to less
desirable unsaturated fatty acids or to saturated fatty acids
which can be prevented by the introduction of synthetic
antioxidants into the products. Barclay exemplifies a)
ethoxyquin (6-ethoxy-1, 2-dihydro- 2, 2, 4-
trimethylquinoline] and (b) TBHQ or tertiary butyl
hydroquinone among others, as synthetic antioxidants which
can be used in combination with the inert fat source . . . .
Barclay teaches the antioxidants are fed to the ruminant as
part of their feed ration.

(Id.). The Examiner finds that Higgs “teaches the addition of one or more of
these antioxidants at amounts from about 200 ppm to 250 ppm or 200 ppm
to 500 ppm depending on the type of feed and additionally teaches the use of

5 Selm et al., 2003/0162809 A1, published Aug. 28, 2003.
6 Linn et al., Feed Efficiency Of Lactating Dairy Cows,
http://web.archive.org/web/20060223164540/http://www.ansci.um
n.edu/dairy/topics/feed_efficiency.pdf
7 Vinci et al., 5,244,681, issued Sept. 14, 1993.
8 Palmquist et al., 4,642,317, issued Feb. 10, 1987.
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a combination of ethoxyquin with butylated hydroxyl anisole (BHA)” (Ans.
7).
The Examiner finds that Selm teaches “increasing feed efficiency of
milk production comprising feeding to a lactating mammal, such as cattle,
sheep or goat, a diet of feed comprising ethoxyquin(6-ethoxy-1,2-dihydro-
2,2,4-trimethylquinoline)” (id.). The Examiner finds that Linn teaches “that
as feed or diet digestibility increases, more nutrients are absorbed into the
body and potentially utilized for milk production” (id. at 8).
The Examiner finds that the “teaching of the active step of feeding the
ruminant animal on fat ration with antioxidants by Barclay, Higgs et al., and
Selm et al. is the same as the method currently claimed, and thus renders the
instant claims obvious” (id. at 9).
The issues with respect to this rejection are:
(i) Does the evidence of record support the Examiner’s conclusion
that Barclay, Higgs, Selm, and Linn render claim 1 prima facie obvious?
(ii) If so, have Appellants presented evidence of secondary
considerations, that when weighed with the evidence of obviousness, is
sufficient to support a conclusion of non-obviousness?
Findings of Fact
1. Barclay teaches “raising an animal comprising feeding the
animal Thraustochytriales or omega-3 HUFAs [highly unsaturated fatty
acids] extracted therefrom. Animals raised by the method of the present
invention include poultry, cattle, swine . . . . The omega-3 HUFAs are
incorporated into the flesh, eggs and milk products” (Barclay, col. 2, ll. 18-
23).
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2. Barclay teaches “saturation of omega-3 HUFAs can be reduced
or prevented by the introduction of synthetic antioxidants or naturally-
occurring antioxidants, such as beta-carotene, vitamin E and vitamin C”
(Barclay, col. 4, ll. 21-24). Barclay teaches that after the omega-3 fatty
acids are purified, “the purified fatty acids can be encapsulated or used
directly. Antioxidants can be added to the fatty acids to improve their
stability” (Barclay, col. 7, ll. 10-12).
3. Barclay teaches that “[s]ynthetic antioxidants, such as BHT,
BHA, TBHQ or ethoxyquin, or natural antioxidants such as tocopherol, can
be incorporated into the food or feed products by adding them to the
products during processing of the cells after harvest” (Barclay, col. 4, ll. 26-
30).
4. Higgs teaches “stabilizing said plant oils by adding an
antioxidant” (Higgs, col. 4, l. 44).
5. Higgs teaches “adding an antioxidant and/or a palatability
enhancer to the cooked mixture. The antioxidant can be selected from the
group consisting of ethoxyquin (santoquin), butylated hydroxyanisole
(BHA), butylated hydroxytoluene (BHT), tertiary butyl hydroquinone,
natural antioxidants and mixtures thereof” (Higgs, col. 6, ll. 1-6).
6. Higgs teaches that “[o]ne or more of the foregoing antioxidants
are also added to the dried protein concentrate, and the animal feed grade
lipid fraction” (Higgs, col. 6, ll. 6-8).
7. Higgs teaches that “[c]ombinations of BHA and ethoxyquin or
ethyoxquin [sic] alone at highest level is used” (Higgs, col. 6, ll. 12-13).
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8. Higgs teaches that “the amount of antioxidant utilized is from
about 200 ppm to about 250 ppm whereas the latter is supplemented with
about 250 ppm to about 500 ppm antioxidant(s)” (Higgs, col. 6, ll. 9-12).
9. Selm teaches “enhancement in milk production, and more
particularly to such improvement by application of dihydroxyquinoline
compounds to the feed of lactating animals” (Selm 1 ¶ 0002).
10. Selm teaches that “ethoxyquin may be used as the sole feed
additive, or it may be used in combination with another technique or
additive. For example, if desired, the ethoxyquin might be used in
combination with a nutriment, at a relative ethoxyquin to nutriment ratio of
choice” (Selm 3 ¶ 0029).
11. Linn teaches that “[o]bviously, as feed or diet digestibility
increases, more nutrients are absorbed into the body and potentially utilized
for milk production or other metabolic functions” (Linn 5-6).
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’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
Analysis
Claim Interpretation
We begin with claim interpretation, since before a claim is properly
interpreted, its scope cannot be compared to the prior art. Claim 1 has three
parts: a preamble (“A method for increasing ruminal nutrient digestion …
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comprising”), manipulative steps (“adding to a final diet” and “feeding to a
ruminant animal”), and an interpretive “wherein” clause. The claims thus
raise the issue of what weight, if any, to give the preamble and “wherein”
clause.
If the claim preamble, when read in the context of the entire
claim, recites limitations of the claim, or, if the claim
preamble is “necessary to give life, meaning, and vitality” to
the claim, then the claim preamble should be construed as if
in the balance of the claim…. If, however, the body of the
claim fully and intrinsically sets forth the complete
invention, including all of its limitations, and the preamble
offers no distinct definition of any of the claimed invention's
limitations, but rather merely states, for example, the
purpose or intended use of the invention, then the preamble
is of no significance to claim construction because it cannot
be said to constitute or explain a claim limitation.

Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999). The preamble of claim 1 reads as follows: “A method for increasing
ruminal nutrient digestion in a ruminant animal that either has been, or may
be, fed a ration comprising a fat source.” The phrase “increasing ruminal
nutrient digestion” recites the purpose or intended use of the claimed
methods but does not offer a distinct definition of the invention’s limitations.
Therefore, the preamble of claim 1 does not limit the manner in which the
claimed steps are performed.
Claim 1 also recites an interpretive “wherein” clause. Claim 1 states:
“wherein the feeding of the first and second antioxidant to the ruminant
animal increases ruminal nutrient digestion in the ruminant animal.” The
wherein clause does not inform the mechanics of how the “adding” or
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“feeding” steps are performed; rather, the wherein clause merely
characterizes the result of those steps. Therefore, the wherein clause is not
entitled to weight in construing the claims. Cf. Minton v. National Ass’n. of
Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) (“The term
‘efficiently’ [in the whereby clause] on its face does not inform the
mechanics of how the trade is executed …. Rather, the term ‘efficiently’ is a
laudatory one characterizing the result of the executing step.”). Although
the appealed claims use the word “wherein,” rather than the “whereby” used
in Minton’s claim, the introduced clauses merely characterize the result of
the method steps but do not inform the mechanics of the method. See also,
Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1172
(Fed. Cir. 1993) (“A ‘whereby’ clause that merely states the result of the
limitations in the claim adds nothing to the patentability or substance of the
claim.”).
We therefore construe claim 1 as requiring the recited “adding” and
“feeding” steps.
Prima Facie Case
Barclay teaches that where the fat being added to the animal feed is
highly unsaturated fatty acids (FF 1), the “saturation of omega-3 HUFAs can
be reduced or prevented by the introduction of synthetic antioxidants or
naturally-occurring antioxidants, such as beta-carotene, vitamin E and
vitamin C” (Barclay, col. 4, ll. 21-24; FF 2). Higgs teaches that
“antioxidants are also added to . . . the animal feed grade lipid fraction”
(Higgs, col. 6, ll. 6-8; FF 6). Higgs teaches the use of “[c]ombinations of
BHA and ethoxyquin” (Higgs, col. 6, ll. 12-13; FF 7). Selm teaches that
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“ethoxyquin may be used as the sole feed additive, or it may be used in
combination with another technique or additive” (Selm 3 ¶ 0029; FF 10).
Applying the KSR standard of obviousness to the findings of fact, we
conclude that the person of ordinary skill would have reasonably followed
the guidance of Barclay, Higgs, and Selm to incorporate antioxidants,
including the quinolone antioxidants taught by Barclay (FF 3), Higgs (FF 5,
7), and Selm (FF 10) along with added fat (FF 1, 6, 9). Higgs directly
suggests the use of a combination of antioxidants including the use of
“[c]ombinations of BHA and ethoxyquin” (Higgs, col. 6, l. 12; FF 7).
The ordinary artisan would therefore have reasonably added
antioxidants to animal feed so that “saturation of omega-3 HUFAs can be
reduced or prevented” (Barclay, col. 4, ll. 21-22; FF 2), for “stabilizing said
plant oils by adding an antioxidant” (Higgs, col. 4, l. 44; FF 4) or for
“enhancement in milk production, and more particularly to such
improvement by application of dihydroxyquinoline compounds to the feed
of lactating animals” (Selm 1 ¶ 0002; FF 9). Such a combination would
merely have been a “predictable use of prior art elements according to their
established functions.” KSR, 550 U.S. at 417.
Appellants contend that “none of the cited references teach a method
for increasing ruminal nutrient digestion” (App. Br. 4).
We are not persuaded. As discussed in our claim interpretation above,
we conclude that neither the preamble nor the “wherein” clause of claim 1
inform the mechanics of the claim, but rather simply characterize the
inherent result of performing the particular method steps. That the prior
art’s reasons (FF 2, 4, 9) for performing the claimed steps might be different
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than Appellants’ does not demonstrate that performing the claimed method
would have been unobvious. See KSR, 550 U.S. at 419 (“In determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. What matters is
the objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.”).
Appellants contend that “there would have been no motivation to
combine for the purposes of the currently claimed invention. Alternatively,
the Appellant asserts that any motivation to combine based off of Higgs or
Barclay would lead to a substantially inoperable invention” (App. Br. 5).
We are not persuaded. The prior art gives several reasons to
incorporate antioxidants with fat including that “saturation of omega-3
HUFAs can be reduced or prevented” (Barclay, col. 4, ll. 21-22; FF 2), for
“stabilizing said plant oils by adding an antioxidant” (Higgs, col. 4, l. 44; FF
4) or for “enhancement in milk production, and more particularly to such
improvement by application of dihydroxyquinoline compounds to the feed
of lactating animals” (Selm 1 ¶ 0002; FF 9).
Appellants also argue that the methods of Barclay, Higgs, or Selm
would be inoperable, but these prior art references expressly show that
antioxidants could have been added to the animal feeds of Barclay, Higgs, or
Selm to stabilize the omega-3 HUFAs or plant oils (FF 2, 4) or enhance milk
production (FF 9).
Appellants contend that “there would have been no reasonable
expectation of success. Barclay and Higgs utilized used-up/spent
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antioxidants that would have been inadequate for the purposes of the
currently claimed invention” (App. Br. 6).
We are not persuaded. Appellants present no evidence that the
antioxidants added in Barclay and Higgs would have been “used up.” See In
re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence.”). Indeed, Barclay expressly teaches
that after the omega-3 fatty acids are purified, “the purified fatty acids can
be encapsulated or used directly. Antioxidants can be added to the fatty
acids to improve their stability” (Barclay, col. 7, ll. 10-12; FF 2).
Secondary Considerations
Appellants contend that “paragraph 4 of the expert declaration states
that the data revealed that the currently claimed methods significantly
increased the digestion in both the fresh and oxidized fat diets” (App. Br. 8).
We have reviewed the Vázquez-Añón9 Declaration and Example 4 of
the Specification, which states that
The digestion of crude protein was reduced in the oxidized
fat diet relative to the fresh fat diet, (P <0.01). The presence
of antioxidants restored the digestion of crude protein in the
oxidized fat diet, however. Although digestion of the neutral
detergent fiber was not affected by fat source, the
antioxidants significantly increased the digestion of the
neutral detergent fibers in both the fresh and oxidized fat
diets (P< 0.02).

(Spec. 36 ¶ 0109.)
We agree with Appellants that these results, using “a liquid blend of
65% ethoxyquin [and] 7% TBHQ” (Spec. 34 ¶ 0104) demonstrate an

9 Declaration of Mercedes Vázquez-Añón, filed Feb. 23, 2010.
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unexpected result regarding the digestion of fresh and oxidized fats in
ruminant feed using ethoxyquin and TBHQ as the antioxidants.
However, Appellants also contend that the “unexpected result is
commensurate with the claims under appeal” (Reply Br. 3).
We are not persuaded. Claim 1 is drawn to the use of a combination
of any quinoline antioxidant with any other second antioxidant, including
nonquinoline natural antibiotics such as tocopherol, while the result is
limited to the use of the two particular tested antioxidants, ethoxyquin and
TBHQ. Thus, the results of Example 4 as relied upon by the Vázquez-Añón
Declaration (see Vázquez-Añón Dec. 2 ¶ 5) are not commensurate in scope
with claim 1. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005)
(Unexpected results must also be “commensurate in scope with the degree of
protection sought by the claimed subject matter.”) Also see In re Tiffin, 448
F.2d 791, 792 (CCPA 1971) (“objective evidence of non-obviousness must
be commensurate in scope with the claims which the evidence is offered to
support”)(evidence showing commercial success of thermoplastic foam
“cups” used in vending machines was not commensurate in scope with
claims directed to thermoplastic foam “containers” broadly).
We therefore find that the unexpected results are insufficient to
overcome the prima facie case of obviousness with regard to claim 1.
However, the unexpected results are sufficient to overcome the prima facie
case of obviousness for claims 7, 13, 14, and 24-27 which are drawn to the
two specific antioxidants for which unexpected results were demonstrated.
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Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Barclay, Higgs, Selm, and Linn render claim 1 prima facie obvious.
Appellants have not presented evidence of secondary considerations,
that when weighed with the evidence of obviousness, is sufficient to support
a conclusion of non-obviousness for claim 1.
Appellants have presented evidence of secondary considerations, that
when weighed with the evidence of obviousness, is sufficient to support a
conclusion of non-obviousness for claims 7, 13, 14, and 24-27.
B. 35 U.S.C. § 103(a) over Barclay, Higgs, Selm, Linn, and Vinci
The Examiner relies upon Barclay, Higgs, Selm, and Linn as
discussed above, also finding that Vinci “discloses a liquid nutrient
formulation for ruminant feedstock” (Ans. 13). The Examiner finds it
obvious to combine the prior art since the feeding nutrients in the water
supply is a known design choice (id. at 13-14).
The Examiner provides sound fact-based reasoning for combining
Vinci with Barclay, Higgs, Selm, and Linn. We adopt the fact finding and
analysis of the Examiner as our own. Appellants provide no arguments
relating to this rejection, so we affirm this rejection for the same reasons as
those given above.
C. 35 U.S.C. § 103(a) over Barclay, Higgs, Selm, Linn, and Palmquist
The Examiner relies upon Barclay, Higgs, Selm, and Linn as
discussed above, also finding that Palmquist “teaches a study comparing the
rumen and digestibility co-efficient in steers fed on a diet comprising either
5% tallow fatty acid or 5% calcium salts of tallow fatty acid” (id. at 15).
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The Examiner finds it obvious to combine the prior art since “the
determination of the extent of fiber digestion would be a good endpoint to
study the efficacy of converting a non-inert fatty source to an inert source”
(id.).
The Examiner provides sound fact-based reasoning for combining
Palmquist with Barclay, Higgs, Selm, and Linn. We adopt the fact finding
and analysis of the Examiner. Appellants provide no arguments relating to
this rejection, so we affirm this rejection for the reasons given above.
SUMMARY
In summary, we affirm the rejection of claims 1-4, 7, 12-14, and 17-
29 under 35 U.S.C. § 103(a) as obvious over Barclay, Higgs, Selm, and
Linn. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii), we also affirm the rejection
of claims 2-4, 12, 17-23, 28 and 29, as these claims were not argued
separately.
We reverse the rejection of claims 7, 13, 14, and 24-27 under 35
U.S.C. § 103(a) as obvious over Barclay, Higgs, Selm, and Linn.
We affirm the rejection of claim 16 under 35 U.S.C. § 103(a) as
obvious over Barclay, Higgs, Selm, Linn, and Vinci.
We affirm the rejection of claim 36 under 35 U.S.C. § 103(a) as
obvious over Barclay, Higgs, Selm, Linn, and Palmquist.

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-IN-PART
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