Ex Parte Vurma et alDownload PDFPatent Trial and Appeal BoardDec 22, 201613509562 (P.T.A.B. Dec. 22, 2016) Copy Citation 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. 13/509,562 05/11/2012 Mustafa Vurma 10437USO1 5412 106587 7590 12/27/2016 Ahhntt T ahnratnries; EXAMINER Department 108140, Bldg. RP3-2 3300 Stelzer Road DUBOIS, PHILIP A Columbus, OH 43219-3034 ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 12/27/2016 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): ipdocket @ c alfee .com AN_Patent_Docketing @ abbott. com wfrick @ c alfee. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MUSTAFA VURMA, JEFFREY M. BOFF, and GARY E. KATZ Appeal 2016-008008 Application 13/509,562 Technology Center 1700 Before BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI and N. WHITNEY WILSON, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants1 request our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1—18. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). 1 The real party in interest is identified as Abbott Laboratories (Appeal Br. 3). Appeal 2016-008008 Application 13/509,562 STATEMENT OF THE CASE Claim 1 is illustrative of Appellants’ subject matter on appeal and is set forth below (with text in bold for emphasis): 1. A concentrated liquid human milk fortifier comprising from about 5% to about 50% by weight protein, on a dry weight basis, wherein the concentrated liquid human milk fortifier comprises a stabilizer system comprising an octenyl succinic anhydride modified com starch and a low acyl gellan gum, and at least a portion of the protein is extensively hydrolyzed casein, and wherein the concentrated liquid human milk fortifier has a caloric density of 1.25 kcal/ml to 5 kcal/ml. We focus on the following combination of applied references relied upon by the Examiner as evidence of unpatentability: 1. Claims 1—2 and 4—18 stand rejected under 35 U.S.C. §103(a) as being unpatentable over McEwen in view of Mahmoud and Morris. 2. Claim 3 is rejected under 35 U.S.C. §103(a) as being unpatentable over McEwen in view of Mahmoud and Morris, as applied to claims 1—2 and 4—15 above, and further in view of Halken. Mahmoud Morris et al. (Morris) McEwen et al. (McEwen) US 4,670,268 US 5,869,118 US 6,194,379 B1 Jun. 2, 1987 Feb. 9, 1999 Feb. 27, 2001 THE REJECTIONS 2 Appeal 2016-008008 Application 13/509,562 ANALYSIS Each of independent claims 1,11, and 15 are directed to “concentrated liquid human milk fortifier” and recite, inter alia, that “the concentrated liquid human milk fortifier has a caloric density of 1.25 kcal/ml to 5 kcal/ml.” By having such a caloric density, Appellants submit that additional nutrition can be provided without overly diluting the human milk to which the liquid fortifier is added. Appeal Br. 7. It is the Examiner’s position that the caloric density disclosed in McEwen “reads on” Appellant’s claimed caloric density range, or alternatively, that the claimed caloric density range is a result effective variable and “that the claimed values are sufficiently close to the prior art, so as to render them obvious over the prior art.” Final Act. 4. Appellants argue, inter alia, that McEwen teaches that maintaining caloric density in a range from about 0.60 kcal per ml to about 1.10 kcal per ml (more preferably from about 0.90 kcal/ml to about 1.05 kcal/ml, and most preferably from about 1.0 kcal per ml) will decrease the bitterness of the product, and that McEwen specifically characterizes this as an “unexpected discovery”. McEwen, col. 13,11. 51-59. Appeal Br. 11. Appellants submit that therefore extending the caloric density of McEwen above the upper limit of about 1.10 kcal/ml (as proposed by the Examiner) is inconsistent with McEwen’s solution to the identified palatability problem, involving an unexpected discovery, and would thus make McEwen unsatisfactory for its intended purpose. We agree, and note that “[i]f the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification.” In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). 3 Appeal 2016-008008 Application 13/509,562 Also, “[i]f the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious.” In re Ratti, 270 F.2d 810, 813 (CCPA 1959). The Examiner’s response is that McEwen indicates that the caloric density is just one of many factors that can be manipulated to improve the taste of the product. Ans. 9. The Examiner states that McEwen teaches that another way to improve taste is to add sugar, and that this would add calories. Ans. 9. However, we agree with Appellants’ stated reply made on page 3 of the Reply Brief. Therein, Appellants state that, as previously pointed out in the Appeal Brief, to overcome the palatability problem associated with elemental nutritional products, McEwen teaches specifically to maintain the caloric density of the elemental nutritional product within a range of about 0.6 kcal/ml to about 1.10 kcal/ml (and most preferably about 1.0 kcal/ml), as well as to incorporate selected palatability enhancers, such as sucrose. McEwen, Abstract and col. 13,11. 51-62. Appellants explain that it appears that the Examiner submits that McEwen teaches either the range of caloric density or the palatability enhancer are used to solve the palatability problem. Appellants submit that in fact McEwen indicates that it is the manipulation of several factors, including the caloric density range and the carbohydrate system (i.e., the incorporation of a palatability enhancer) that achieves a more palatable product. McEwen, col. 13,11. 51-53. Appellants argue that regardless of how much sucrose or other palatability enhancer is used in the product, McEwen teaches that the caloric density range of the product is from about 0.6 kcal/ml to about 4 Appeal 2016-008008 Application 13/509,562 1.10 kcal/ml (which is described by McEwen as an unexpected discovery). Appellants argue that McEwen does not teach increasing the amount of the total carbohydrate system used in the product (which is from about 50% to about 70% of the total calories), but only the amount of palatability enhancer that is used in the carbohydrate system. Appellants therefore submit that the Examiner’s argument that adding more palatability enhancer “would naturally add calories to the product” (Ans. 9) is without merit because McEwen teaches to replace one carbohydrate component with another carbohydrate component, namely, the palatability enhancer. Reply Br. 3. We are persuaded by such argument. The Examiner also finds that “about 1.10” reads on “1.25”. Final Act. 4. However, we agree with Appellants’ remarks made on page 12 of the Appeal Brief, and on pages 3^4 of the Reply Brief, and note that the Examiner’s reply (Ans. 10) does not adequately address Appellants’ stated position in the record, especially with regard to the fact that McEwen provides an express definition (McEwen, col. 6,11. 18—19) that the term “about” refers to any number in the specified range (as pointed out by Appellants on page 12 of the Appeal Brief). The Examiner also states that the recited caloric density value is a result effective variable. Final Act. 4. However, the Examiner fails to point to evidence in the record showing that it is a result effective variable. McEwen, for example (as pointed out by Appellants (Appeal Br. 11)), indicates otherwise, by characterizing McEwen’s disclosed range as an “unexpected discovery”. McEwen, col. 13,11. 51—59. Furthermore, as discussed, supra, modifying McEwen in such a manner would render McEwen unsatisfactory for its intended purpose. 5 Appeal 2016-008008 Application 13/509,562 In view of the above, we are persuaded by Appellants’ arguments and thus agree with their conclusion that a prima facie case has not been met.2 We thus reverse Rejection 1. We also reverse Rejection 2 because the Examiner does not rely upon the additional reference applied in Rejection 2 to cure the deficiencies of the combination of references applied in Rejection 1. DECISION Each rejection is reversed. ORDER REVERSED 2 As such, the Examiner’s stated position that Appellants have not demonstrated criticality regarding the claimed caloric density range need not be addressed (as stated by Appellants on page 3 of the Reply Brief). 6 Copy with citationCopy as parenthetical citation