Ex Parte Wreesmann et al

Patent Trial and Appeal Board

Nov 30, 2017

13503237 (P.T.A.B. Nov. 30, 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.
13/503,237 05/18/2012 Caret Theo Jozef Wreesmann AFC10967USP1 2881
27624 7590 12/04/2017
AK70 NORFT TNP
EXAMINER
AkzoNobel Legal Group
525 W. Van Buren
ZILBERING, ASSAF
Chicago, IL 60607 ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
12/04/2017 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):
ipani.patent @ akzonobel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CAREL THEO JOZEF WREESMANN,
ADRIANUS MARIA REICHWEIN,
MARCELLINUS ALEXANDER VAN DOORN, and
JAVIER MARTIN-TERESO LOPEZ
Appeal 2017-002051
Application 13/503,237
Technology Center 1700
Before DONNA M. PRAISS, N. WHITNEY WILSON, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL1
1 In this Opinion, we refer to the Specification filed Apr. 20, 2012 (“Spec.”),
the Final Office Action dated Oct. 22, 2015 (“Final Act.”), the Appeal Brief
filed May 23, 2016 (“App. Br.”), the Examiner’s Answer dated Sept. 23,
2016 (“Ans.”), and the Reply Brief filed Nov. 22, 2016 (“Reply Br.”).
Appeal 2017-002051
Application 13/503,237
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 2—9, 11—15, and 18—203 as obvious under 35 U.S.C.
§ 103(a). App. Br. 5.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention relates to a supplement for making metals nutritionally
available to animals using metal complexes of, inter alia, glutamic acid-N,N-
diacetic acid (GFDA). Spec. 1:3—4,4:18—20. According to the
Specification, the use of metal sources in animal feed is a long established
practice (Spec. 1:9). However, the use of conventional salts of zinc, for
example, may result in gastrointestinal precipitation into forms, which are
not available for absorption in the gastrointestinal tract (id. at 2:8—11), and
the use of metal amino acid complexes, such as copper lysine complex, may
result in increased copper content in the animal’s manure (id. at 3:14—27).
Claim 6 is illustrative (paragraphing added):
6. A method of making a metal nutritionally available
to an animal comprising the step of providing the animal with a
supplement incorporated in animal feed, animal drinking water,
salt licks, or premixes therefor,
wherein the supplement comprises at least one compound
selected from the group consisting of glutamic acid N,N-diacetic
acid (GFDA), a metal complex of GFDA, a sodium salt of
GFDA, a potassium salt of GFDA, methylglycine-N,N-diacetic
2 Akzo Nobel Chemicals International B.V. is the real party in interest. App.
Br. 2.
3 The rejection of claim 19 as indefinite under 35 U.S.C. § 112,12 stands
withdrawn. Ans. 9. The question of whether the Examiner erred in issuing a
restriction requirement for claims 16 and 17 (App. Br. 8—9) is a matter that is
petitionable pursuant to 37 C.F.R. § 1.181 rather than appealable. 37 C.F.R.
§ 1.144.
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acid (MGDA), a metal complex of MGDA, a sodium salt of
MGDA, and a potassium salt of MGDA.
App. Br. 10 (Claims Appendix).
OPINION
The Examiner finds that claims 2—9, 11—15, and 18—20 would have
been obvious to one of ordinary skill in the art at the time of the invention
over Beres4 and Chemserv5 or Essentialingredients6 for the reasons stated on
pages 5—8 of the Final Office Action.
Appellants do not separately argue the claims rejected; therefore, we
select claim 6, the sole independent claim, as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Appellants argue that the Examiner erred in rejecting the claims over
the cited references because (1) Beres does not suggest that EDTA should be
used with any other metal nutrient besides manganese, (2) Beres’ silence as
to the use of EDTA or any amino polycarboxylic acid with any other metal
is a teaching away from the use of EDTA with other metals, (3) Chemserv
states that L-glutamic acid, not GLDA, is food approved and regarded as a
safe food additive, (4) Chemserv does not teach or suggest that GLDA
would be beneficial for use in a nutritional supplement to deliver metal
4 Beres et al., WO 83/01559, pub. May 11, 1983 (“Beres”). The Examiner
also refers to this prior art reference as “Beers” in the Answer.
5 Dissolvine GL Product Article, Chem/Serv. Inc., Akzo Nobel introduces a
new biodegradable chelating agent (http://www.dissolvine.com) (Oct. 10,
2007) (“Chemserv”). The Examiner also refers to this prior art reference as
“Chaser” in the Answer.
6 Dissolvine GL Product Article, Essentialingredients.com, New eco-friendly
chelating agent: GLDA (http://www.dissolvine.com) (Apr. 18, 2009)
(“Essentialingredients”).
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nutrients to an animal, (5) there was no motivation to combine Beres and
Chemserv because there would have been no reason that a skilled artisan,
looking for a ligand for food nutrient supplements to increase the
bioavailability of a metal, would have looked to a disclosure of additives for
industrial cleaning products, and (6) Essentialingredients also would not
have provided a reason to use GLDA in a nutritional supplement because it
relates to the use of GLDA in personal care products for a variety of benefits
that do not suggest that a metal would be released from the ligand at the
appropriate time in the animal in order to be available for bioabsorption.
App. Br. 5-8.
The Examiner responds that Beres discloses “forming biologically
acceptable compounds of trace elements (e.g., cobalt, vanadium, selenium,
tin, nickel, boron, zinc, copper, manganese, iron and/or magnesium) into
trace elements-ligand complexes (i.e. chelates), wherein the ligands are
amino carboxylates, such as EDTA and glycine.” Ans. 10 (citing Beres,
Abstr, 5:14—7:15). The Examiner finds that Beres discloses that EDTA is
preferably used to form metal complexes, but that does not teach away from
forming less preferred trace elements-ligand. Id. The Examiner further
finds that Chemserv also recognizes EDTA as a well-known metal chelating
agent. Id.
Regarding Chemserv, the Examiner responds that even if it fails to
teach that GLDA is food safe, it would have been obvious to a skilled artisan
that GLDA is food safe and a safer, less toxic substitute for EDTA, a known
food additive with a good toxicological profile, because L-glutamic acid is a
safe food additive, and GLDA comprises the naturally occurring and food
safe amino acid L-glutamic acid, as well as the naturally occurring and food
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safe acetic acid ligands. Id. at 11. The Examiner further finds that
Chemserv discloses that GLDA has the benefits of being (1) more thermally
stable than other chelating agents and (2) more water soluble over a wide pH
range than other chelating agents such as EDTA, and such superior
dispersibility and endurance during potential passage through the digestive
tract are valued traits in the chelating and food arts. Id. at 12.
Regarding the combination of the cited prior art references, the
Examiner finds that solubilizing minerals (i.e., metals) by forming
complexes with organic ligands is a common interest to both the detergent
and food/feed arts. Id. Because EDTA is a known chelating agent in the
food art, and it would have been understood from Chemserv that GLDA is a
safer less toxic chelating agent than EDTA, it would have been obvious to
substitute EDTA with GLDA as the organic ligand to chelate
metals/minerals to provide bioavailable metals/minerals. Id. at 13. The
Examiner also responds that the disclosure that GLDA is a good chelating
agent for many metals over a broad pH range indicates that the
metals/minerals chelated with GLDA will not be altered while passing
through the digestive tract (i.e., without a breakdown of the amino acid
ligands) until effectively used. Id. at 14.
In the Reply Brief, Appellants argue that for Beres’ “nutritional
supplement to be effective it is not enough that a chelating agent forms a
complex with a metal.” Reply Br. 2. According to Appellants, it is
necessary for the complex to be “strong enough to survive the passage
through the stomach . . ., but it must not be so strong that. . . the metal is no
longer available to the animal to which the supplement is fed.” Id. at 3.
Appellants further assert that the Examiner’s obviousness analysis “ignores
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the complexity of the processes of digestion and bioabsorption of trace
element nutrients in animals,” citing in support Beres’ disclosure of a
different ligand for different metal nutrients for animal feed purposes. Id.
Regarding the Examiner’s findings as to Chemserv, Appellants
contend that the Examiner has not provided sound technical or scientific
reasoning to support the conclusion that a compound is recognized as food
safe just because it includes food-safe moieties. Id. at 3^4. Similarly,
Appellants assert that there is no evidence that GLDA is food safe,
ingestible, or useful to make a metal nutritionally available to an animal, or
that solubility and thermal stability of GLDA has any connection to its
endurance as a metal complex during potential passage through a digestive
tract. Id. at 6.
Regarding the combination of prior art references, Appellants argue
that not all chelating agents successfully transport the metal as chelated
because dissociation can occur before the final physiological site. Id. at 7.
We are not persuaded by Appellants’ arguments for the reasons stated
by the Examiner in the Final Office Action and Answer. We add the
following primarily for emphasis.
The difficulty with Appellants’ argument is that the preponderance of
the evidence in this appeal supports the substitution of GLDA for EDTA as a
chelating agent for metals. Appellants’ assertion that modifying Beres by
substituting GLDA for EDTA would have been unpredictable because
dissociation can occur before the final physiological site (Reply Br. 7) is not
persuasive of reversible error by the Examiner because it is merely attorney
argument. It is well settled that arguments of counsel cannot take the place
of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d
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135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984). Appellants do not dispute that EDTA and GLDA are each chelating
agents. Nor do Appellants dispute that Chemserv discloses favorable
thermal stability and solubility properties of GLDA using EDTA as a basis
of comparison.
We also are not persuaded by Appellants’ argument (App. Br. 6) that
the teachings of Beres are limited to the use of EDTA with manganese in
animal feed and, because Beres does not explicitly disclose EDTA in
combination with another metal, Beres’ silence amounts to a teaching away
from using EDTA together with any metal other than manganese in animal
feed. As the Examiner finds (Ans. 10), Beres discloses that trace elements
can be formed into biologically acceptable compounds with ligands, where
the trace elements disclosed include zinc, copper, iron, manganese, cobalt,
and magnesium, and the ligands disclosed include amino carboxylates such
as EDTA and glycine. Beres, Abstr., 5:14—7:15. According to Beres, the
bioinorganic elements formed with the trace elements do not form
precipitates with the components of the composition and ensure an acidic
pH. Beres 5:14—21. Beres subsequently lists specific compounds for
combining with the trace elements. Id. at 5:22—7:15. In a determination of
obviousness, a reference may be relied upon for all that it would have
reasonably suggested to one having ordinary skill in the art. Merck & Co. v.
Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art]
patent discloses a multitude of effective combinations does not render any
particular formulation less obvious.”). Moreover, “a reference is not limited
to the disclosure of specific working examples.” In re Mills, 470 F.2d 649,
651 (CCPA 1972).
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The subsequent listing by Beres of specific compounds for combining
with the trace elements does not include any statements discouraging the use
of EDTA with a trace element other than manganese. “A reference may be
said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Therefore, the lack of a specific example in Beres combining EDTA with a
trace element other than manganese is not persuasive of a teaching away by
Beres from forming such a complex.
Regarding the interchangeability of GFDA for EDTA taught by
Chemserv, we are not persuaded by Appellants (App. Br. 7) that Chemserv
does not disclose any benefits of GLDA that would be useful for delivering
metal nutrients to an animal. The Examiner’s findings that it would have
been obvious to an ordinarily skilled artisan that GLDA is food safe (Ans.
11), that GLDA has superior dispersibility and thermal stability to EDTA
which is useful in the chelating and food arts (id. at 12), and that it would
have been obvious to an ordinarily skilled artisan to substitute EDTA with
GLDA as a ligand to chelate metals (id. at 13) are supported by the
preponderance of the evidence of record.
Appellants do not dispute that GLDA is glutamic acid di-acetic acid
(App. Br. 6), that GLDA is made of L-glutamic acid (id. at 7), and that L-
glutamic acid is a safe food additive (Reply Br. 3). L-glutamic acid is a
naturally occurring amino acid. Chemserv 1. Appellants fail to adequately
explain why a person having skill in the art, armed with the knowledge that
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L-glutamic acid is a safe food additive, would not have reasonably expected
glutamic acid di-acetic acid to be food safe.
Appellants also do not dispute that EDTA is a well-known chelating
agent used in food products. App. Br. 6 (“the fact that EDTA is known as a
chelating agent for other metals is not dispositive.”). Chemserv explicitly
teaches that “GLDA is a direct alternative to . . . EDTA, fulfilling all of the
targets set above” i.e. “good ecological and toxicological profile” and
“matches the performance profile of traditional chelating agents.” Chemserv
1. Appellants fail to adequately explain why a person having skill in the art,
armed with the knowledge of the trace elements and ligands Beres discloses
for use in animal feed and also the knowledge that GLDA is a direct
alternative to EDTA as disclosed by Chemserv, would not have reasonably
expected that GLDA would also be food safe and that complexes can be
formed with GLDA as with EDTA.
Moreover, Appellants do not direct us to any evidence that EDTA
would not have been reasonably expected to adequately complex with the
trace elements disclosed by Beres to function as an animal feed supplement.
Appellants’ argument that Beres’ disclosure of specific examples of a
variety of ligands coupled to trace elements evidences that the Examiner
erred in overlooking the unpredictability of bioavailability of such
complexes is insufficient to rebut the Examiner’s findings. For the same
reasons discussed above, we are not persuaded that Beres’ disclosure of
multiple examples alone evidences that EDTA would only be expected to
work when complexed with manganese. Even if Beres’ example of EDTA
as a ligand performs best when complexed with manganese compared to the
other trace elements disclosed by Beres, “obviousness cannot be avoided
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simply by a showing of some degree of unpredictability in the art so long as
there was a reasonable probability of success.” Pfizer, Inc. v. Apotex, Inc.,
480 F.3d 1348, 1364 (Fed. Cir. 2007). “Obviousness does not require
absolute predictability of success. . . . [A]ll that is required is a reasonable
expectation of success.” In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir.
1988) (citations omitted).
Thus, the Examiner’s finding that Beres generally teaches animal feed
supplements comprising a chelating agent and a metal (Ans. 10; Final Act.
6) is supported by the preponderance of the evidence cited in this appeal.
Moreover, the Examiner has provided reasons for modifying Beres’ metal-
ligand complex by substituting Chemserv’s GLDA chelating agent for
Beres’ EDTA ligand, namely, GLDA is a known substitute for EDTA,
GLDA is a good chelating agent for many metals over a broad pH range to
ensure amino acid ligands are not broken down during passage through the
digestive tract, GLDA has improved solubility compared to EDTA to avoid
precipitation in the gut, and GLDA has a comparably good toxicological
profile to EDTA (Ans. 12—14; Final Act. 6—7).
Appellants’ assertion in the Reply Brief that thermal stability and
solubility are not necessarily traits useful in the food arts let alone for animal
feed supplements (Reply Br. 6—7) is not persuasive for a number of reasons.
First, Appellants do not deny that Chemserv discloses that EDTA and
GLDA are substitutable. Second, Appellants do not deny that thermal
stability and solubility are traits that are useful in the food arts. Third,
Appellants do not direct us to any evidence that it would have been beyond
the skill of a person having ordinary skill in the art of preparing a food
supplement using EDTA to modify Beres by substituting EDTA with
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another known chelating agent. Fourth, the substitution of one element for
another known to perform the same function of chelating trace elements
must do more than yield a predictable result. See KSR Int 7 Co. v. Teleflex
Inc., 550 US 398, 416—17 (2007). The reason for declining to allow a claim
for subject matter that would have been obvious under § 103 is based on the
proposition that such allowance withdraws from the public domain subject
matter that those skilled in the art should be free to use. Graham v. John
Deere Co., 383 U.S. 1,6 (1966) (patents should not be issued whose effects
are to remove existent knowledge from the public domain or to restrict free
access to materials already available). See also In re Kubin, 561 F.3d 1351,
1357—58 (Fed. Cir. 2009) (quoting In re Wiseman, 596 F.2d 1019, 1023
(CCPA 1979) (“[a] patent on such a structure would remove from the public
that which is in the public domain by virtue of its inclusion in, or obvious
from, the prior art”); In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed.
Cir. 2007) (“obvious variants of prior art references are themselves part of
the public domain”). Accordingly, we find the Examiner’s combination of
the cited art is reasonable and the underlying findings are supported by the
preponderance of the evidence cited in this appeal record.
In sum, we affirm the Examiner’s rejection of claims 2—9, 11—15, and
18—20 as obvious over Beres and Chemserv or Essentialingredients.
CONCLUSION
We affirm the Examiner’s rejection of claims 2—9, 11—15, and 18—20
as obvious under 35 U.S.C. § 103(a).
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DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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