Ex Parte Wardell et al

Patent Trial and Appeal Board

Jun 28, 2016

13584629 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/584,629 08/13/2012
34282 7590 06/30/2016
QUARLES & BRADYLLP
Attn: IP Docket
ONE SOUTH CHURCH A VENUE, SUITE 1700
TUCSON, AZ 85701-1621
Gordon Wardell
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.
122107.00005 1247
EXAMINER
GEORGE, PATRICIA ANN
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GORDON WARDELL, and
F ABIANA AHUMADA-SEGURA
Appeal2014-008493
Application 13/584,629
Technology Center 1700
Before MARK NAGUMO, MICHAEL P. COLAIANNI, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision2 twice rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
1 Appellants identify the real party in interest as Gordon Wardell and
Fabiana Ahumada-Segura. Appeal Brief filed April 3, 2014 ("Br."), 1.
2 Non-Final Office Action mailed December 27, 2013 ("Non-Final Act.").
Appeal2014-008493
Application 13/584,629
The subject matter on appeal relates to compositions for consumption
by bees. See Spec. 1 :9. Claim 1, reproduced below, is illustrative of the
claims on appeal.
1. An artificial diet formulation suitable for rearmg bees,
compnsmg:
about 20-80% protein derived from at least two sources
including com gluten, about 1-7 % lipids derived from at
least two sources including com gluten, and about 10-90%
carbohydrate.
App. Br. A-1 (Appendix A, Claims on Appeal).
REJECTIONS
The following rejections are before us for review:
1. Claims 1--4, 6-13, and 15-20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Nieuwenhuizen (US 2006/0134182 A 1,
published June 22, 2006) in view of the combination ofHayen et
al. (US 6,214,337 Bl, issued April 10, 2001) (hereinafter
"Hayen"), Jungvid (US 4,035,516, issued July 12, 1977), Cohen et
al. (US 2006/01483 78 A 1, published July 6, 2006) (hereinafter
"Cohen '378"), as evidenced by Com Gluten Material Safety Data
Sheet;
2. Claims 5 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nieuwenhuizen in view of the combination of
Hayen, Jungvid, Cohen '378, as evidenced by Com Gluten
Material Safety Data Sheet, and further in view of DeGuzman et
al., "Russian Honey Bee (Hymenoptera: Apidae) Colonies:
Acarapis woodi (Acari: Tarsonemidae) Infestations and
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Appeal2014-008493
Application 13/584,629
Overwintering Survival," 98(6) Journal of Economic Entomology,
1796-1801 (2005) (hereinafter "Guzman"); and
3. Claims 1 and 2 are rejected for obviousness-type double patenting
over claim 11 of Cohen et al. (US 8,025,552 B2, issued
September 27, 2011) (hereinafter "Cohen '5523") in view of
Hay en.
ANALYSIS
Rejection 1
Rejection 1 was modified by the Examiner in the Answer by no longer
relying on references previously relied upon in the Non-Final Office Action
mailed December 2 7, 2013. Ans. 2, 19. The Examiner indicated that the
modified rejection was a new ground of rejection. Ans. 19. The new ground
of rejection no longer applies the references which Appellants disputed
qualified as prior art (see Br. 6-7). See Ans. 19. However, the Examiner's
reasoning for combining Nieuwenhuizen, Hayen, Jungvid, and Cohen '378
remains substantially similar to the reasoning set forth in the Non-Final
Office Action mailed December 27, 2013. See Non-Final Act. 4-5; 7-8; see
also Ans. 4-5, 7-8, 21. Accordingly, we consider the appeal rather than
dismissing it on procedural grounds pursuant to 37 C.F.R. § 41.39(b).
Appellants do not dispute the Examiner's findings with respect to
Nieuwenhuizen, Hayen, Jungvid, and Cohen '378 individually. See Br. 4-7.
Rather, Appellants argue that "simply knowing that each element exists for a
feed product does not by itself motivate one of ordinary skill to utilize only
3 Cohen '552 (as does Cohen '378) has two common inventors, Gordon
Wardell and Fabiana Ahumada-Segura, with the appealed application.
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Appeal2014-008493
Application 13/584,629
certain ones together, especially that there are a great many number of
ingredients and combinations of ingredients that may be utilized in a feed."
Id. at 5. This argument is not persuasive of harmful error because the weight
of the evidence supports the Examiner's conclusion that a person of ordinary
skill would have been motivated to combine the references because the
proposed combination of ingredients is nothing more than the predictable
use of these ingredients according to their established functions (see Ans.
21). See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (In
assessing the obviousness of claims to a combination of prior art elements,
the question to be asked is "whether the improvement is more than the
predictable use of prior art elements according to their established
functions."). Appellants have not persuaded us that the reason supporting
the Examiner's conclusion of obviousness is erroneous.
Appellants argue that the Specification and the Affidavit executed by
Dr. Gordon Wardell, Ph.D, are evidence that "contradicts the Examiner's
conclusion that the claimed combinations and amounts were merely the use
of prior art elements according to their established functions to achieve a
predictable result." Br. 5. This argument is not persuasive, because as the
Examiner correctly finds, the alleged evidence of unexpected results is
deficient because it is not commensurate in scope with the appealed claims,
and does not include a comparison of the claimed invention with the closest
prior art. See Ans. 22.
Thus, for the reasons above, we sustain the rejection.
Rejection 2
Appellants do not present arguments contesting the Examiner's
rejection of claims 5 and 14 under 35 U.S.C. § 103(a). See Br. i., 4-9.
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Application 13/584,629
Consequently, Appellants have waived any argument of error, and we
summarily sustain the rejection of claims 5 and 14. See Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) ("If an appellant fails to
present arguments on a particular issue-or more broadly, on a particular
rejection--the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection") and Manual of Patent Examining
Procedure (MPEP) § 1205.02 (9th ed., Nov. 2015) ("If a ground of rejection
stated by the examiner is not addressed in the appellant's brief, appellant has
waived any challenge to that ground of rejection and the Board may
summarily sustain it, unless the examiner subsequently withdrew the
rejection in the examiner's answer.").
Rejection 3
Appellants argue that there is no reason to modify the honey bee diet
formulation recited in claim 11 of Cohen '552 to include protein and lipid
derived from corn gluten. See Br. 8. \Ve are not persuaded by this
argument. The Examiner determines that it would have been obvious for
one of ordinary skill in the art at the time the invention was made to include
com gluten in the honey bee diet formulation recited in claim 11 of
Cohen '552 because like soy flour and dried egg, com gluten is recognized
in the art, as evidenced by Hayen, as a suitable protein-containing
component for use in animal feed compositions. See Ans. 18-19.
Appellants have not shown reversible error in this determination. Nor, as
discussed above, have Appellants provided sufficient evidence to rebut the
showing of prima facie obviousness. Accordingly, we sustain the rejection.
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Application 13/584,629
DECISION
We affirm the Examiner's obviousness rejections of claims 1-20.
We affirm the Examiner's obviousness-type double patenting
rejection of claims 1 and 2.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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