Ex Parte Wright et al

Patent Trial and Appeal Board

May 23, 2018

13275895 (P.T.A.B. May. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/275,895 10/18/2011
20686 7590 05/25/2018
DORSEY & WHITNEY, LLP - Denver
INTELLECTUAL PROPERTY DEPARTMENT
1400 W ewatta Street
Suite 400
DENVER, CO 80202-5549
FIRST NAMED INVENTOR
Danny R. Wright
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.
P247010.US.02 2754
EXAMINER
SAY ALA, CHHAYA D
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
05/25/2018 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):
docketing-dv@dorsey.com
docketingDV @dorsey.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANNY R. WRIGHT and RICHARD J. V ALAGENE
Appeal2017-004942
Application 13/275,895
Technology Center 1700
Before JAMES C. HOUSEL, JULIA HEANEY, and
JANEE. INGLESE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner's decision rejecting claims 1, 5-8, 10, 14--17, 19-21, 23-25, and
27. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision refers to the Specification (Spec.) filed October 18, 2011, the
Examiner's Non-Final Office Action (Non-Final) dated September 2, 2015,
Appellants' Appeal Brief (Appeal Br.) filed September 2, 2016, the
Examiner's Answer (Ans.) dated December 1, 2016, and Appellants' Reply
Brief (Reply Br.) filed January 31, 2017.
2 According to Appellants, the real party in interest is H.J. Baker & Bro.,
Inc. Appeal Br. 3.
Appeal2017-004942
Application 13/275,895
STATEMENT OF THE CASE
The invention relates to granular feed supplements for ruminant
animals. Spec. i-f 2. Appellants disclose that ruminant animals have four
morphologically distinct compartments including the rumen, the reticulum,
the omasum, and the abomasum. Id. i-f 3. Bacteria in the rumen enable
ruminants to digest cellulosic materials, whereas conventional digestion
occurs in the abomasum. Id. According to Appellants, the microbial action
in the rumen decomposes a substantial part of amino acids orally fed to the
ruminant, thereby rendering them of lower nutritive value to the animal. Id.
i-fi-1 6, 9. Appellants disclose that a number of methodologies exist to protect
biologically active substances through the rumen without decomposition, yet
allow these substances to be effectively digested and absorbed in the
abomasum. Id. i-fi-19, 11. Therefore, Appellants disclose one solution
comprises a granulated, biologically active core material and a coating
material surrounding the core material, the coating material comprising
saturated, linear aliphatic monocarboxylic acids having from 2 to 34 carbon
atoms, in an amount of at least 60 wt% of the total weight of the coating
material. Id. i-f 39.
Independent claim 1, reproduced below from the Claims Appendix to
the Appeal Brief, is illustrative of the subject matter on appeal. The
limitation at issue is italicized.
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1. A ruminant feed composition, comprising:
a granulated core comprising lysine sulfate; and
a coating surrounding the core, the coating comprising;
a hydrogenated vegetable oil,
stearic acid, and
palmitic acid;
wherein the total amount of stearic and palmitic acids is
at least 90 wt% of the total weight of the coating, and
wherein the lysine exhibits a rumen bypass rate greater
than 75%, and an intestinal digestibility rate greater than 70%.
Independent claim 17 similarly recites a ruminant feed composition
comprising a granulated L-lysine sulfate core and at least two layers of a
coating material surrounding the core including a hydrogenated vegetable
oil, stearic acid, and palmitic acid, wherein the total amount of stearic and
palmitic acids is at least 90 wt% of the total weight of the coating.
Independent claim 19 recites a method of supplementing the diet of a
ruminant comprising providing (feeding) the ruminant with a ruminant feed
composition similar to that of claims 1 and 17, including a coating having at
least 90 wt% of stearic and palmitic acids.
Independent claim 23 recites a method of making a ruminant feed
composition comprising coating a granulated L-lysine sulfate core with a
coating material having at least 90 wt% of stearic and palmitic acids.
REJECTIONS
The Examiner maintains, and Appellants request our review of, the
following grounds of rejection:
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1. Claims 1, 5-8, 10, 14--17, 19-21, 23-25, and 27 on the ground
of nonstatutory double patenting as provisionally unpatentable over
claims 1, 3, 5-13, and 15-22 of copending Application No.
13/431,790 in view of Cummings;
2. Claims 1, 5-8, 10, 14--17, 19-21, 23-25, and 27 on the ground
of nonstatutory double patenting as provisionally unpatentable over
claims 1, 2, 5-12, and 15-19 of copending Application No.
13/433,021 in view of Cummings;
3. Claims 1, 5, 8, and 10 under 35 U.S.C. § 103(a) as unpatentable
over Jobe3 in view of Okutani4 and Stevens; 5
4. Claim 7 under 35 U.S.C. § 103(a) as unpatentable over Jobe in
view of Okutani and Stevens, further in view of Cavassini 6 and
Itagaki; 7
5. Claim 14 under 35 U.S.C. § 103(a) as unpatentable over Jobe in
view of Okutani and Stevens, further in view of Kitamura; 8
3 US 2003/0148013 Al, published August 7, 2003 ("Jobe").
4 EP 1741347 Al, published January 10, 2007 ("Okutani").
5 US 6,017,555, issued January 25, 2000 ("Stevens").
6 WO 2006/032958 A3, published March 30, 2006 ("Cavassini").
7 US 4,937,083, issued June 26, 1990 ("Itagaki"). The Examiner refers to
this reference as "Itakagi." Ans. 9, 37, and 47.
8 US 5,676,966, issued October 14, 1997 ("Kitamura").
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6. Claim 15 under 35 U.S.C. § 103(a) as unpatentable over Jobe in
view of Okutani and Stevens, further in view of King; 9
7. Claim 17 under 35 U.S.C. § 103(a) as unpatentable over Jobe in
view of Okutani and Stevens, further in view of Richardson, 10
Cavassini, Bettini, 11 Maruyama, 12 Hansen, 13 and Rode; 14
8. Claims 19-21, 23-25, and 27 under 35 U.S.C. § 103(a) as
unpatentable over Jobe in view of Okutani and Stevens, further in
view of Cavassini, Bettini, Maruyama, Hansen, and Rode; and
9. Claims 1, 5, 7, 8, 10, 14, 15, 17, 19-21, 23-25, and 27 under
35 U.S.C. § 103(a) as unpatentable over Gately 15 in view of Okutani,
further in view of Cummings and Jobe.
ANALYSIS
Provisional Rejection 1: Obviousness-type Double Patenting over copending
Application No. 131431, 790 in view of Cummings
The Examiner finds that both sets of claims from the present and
copending applications include a granulated core of the same amino acid
coated with the same vegetable oil and provide the same feed efficiency.
Ans. 3. Although acknowledging that the copending claims do not recite the
9 US 5,807 ,594, issued September 15, 1998 ("King").
10 US 6, 797 ,291 B2, issued September 28, 2004 ("Richardson").
11 WO 2008/015203 A2, published February 7, 2008 ("Bettini").
12 JP 60141242 A, published July 26, 1985 ("Maruyama").
13 US 3,295,984, issued January 3, 1967 ("Hansen").
14 US 5,720,970, issued February 24, 1998 ("Rode").
15 US 2009/0092704 Al, published April 9, 2009 ("Gately").
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fatty acids per se, the Examiner nonetheless finds "it is well known that
these oils contain such fatty acids." Id., citing Cummings 3 :35--45.
Appellants argue that while stearic and palmitic acids exist in some
vegetable oils, the cited art does not teach or suggest the total amount of
stearic and palmitic acids in the coating material is at least 90 wt% of the
total weight of the coating. Appeal Br. 32. Appellants also contend that the
Examiner has failed "to articulate some rationale for combining art that fails
to teach the claimed compositions and methods, and explicitly teaches away
from Appellant's methods and compositions." Id.
Appellants' argument is persuasive of reversible error. The copending
claims recite a ruminant feed composition whose coating material comprises
an at least partially hydrogenated vegetable oil selected from the group
consisting of palm oil, soybean oil, rapeseed oil, cottonseed oil, and castor
oil. The Examiner does not direct our attention to any particular recitation in
any of the copending claims as reciting any further limitation pertinent to the
fatty acid content of the coating material. While the Examiner finds that it is
well known that vegetable oils contain stearic and palmitic acids, the
Examiner fails to direct our attention to any evidence that any of the
vegetable oils recited in the copending claims contain at least 90 wt% stearic
and palmitic acids. To the contrary, Cummings teaches that the stearic and
palmitic acid content of soybean, cottonseed, and rapeseed oils are
respectively, 16 wt%, 26 wt%, and 7 wt%. Cummings 3:35--45. As such,
there is insufficient evidentiary support for the determination that the present
claims are not patentably distinct from the copending claims of Application
No. 13/431,790.
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Provisional Rejection 2: Obviousness-type Double Patenting over
copending Application No. 131433,021
The Examiner finds that both sets of claims from the present and
copending applications include a granulated core of the same amino acid
coated with the same vegetable oil and provide the same feed efficiency.
Ans. 4. The Examiner notes that the copending claims include fatty acids as
a modifier and, by coating the granule with vegetable oil, the coating also
includes the same fatty acids as now claimed. Id., citing Cummings 3:35-
45.
Appellants argue that while stearic and palmitic acids exist in some
vegetable oils, the cited art does not teach or suggest the total amount of
stearic and palmitic acids in the coating material is at least 90 wt% of the
total weight of the coating. Appeal Br. 32. Appellants also contend that the
Examiner has failed "to articulate some rationale for combining art that fails
to teach the claimed compositions and methods, and explicitly teaches away
from Appellant's methods and compositions." Id.
Appellants' argument is persuasive of reversible error. The copending
claims recite a ruminant feed composition whose coating material comprises
an at least partially hydrogenated soybean oil and about 0.5 wt% to about 10
wt% of stearic acid or oleic acid as a modifying agent. The Examiner does
not direct our attention to any particular recitation in any of the copending
claims as reciting any further limitation pertinent to the fatty acid content of
the coating material. While the Examiner finds that it is well known that
vegetable oils contain stearic and palmitic acids, the Examiner fails to direct
our attention to any evidence that soybean oil along with up to about 10 wt%
stearic acid as a modifying agent recited in the copending claims either
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anticipates or renders obvious a coating material containing at least 90 wt%
stearic and palmitic acids. To the contrary, Cummings teaches that the
stearic and palmitic acid content of soybean oil is 16 wt%. Cummings 3 :3 5-
45. If the recited amount of up to 10 wt% stearic acid were added to the
soybean oil, the resulting coating material would have about 26 wt% stearic
and palmitic acid, which is well below the minimum level recited in the
present claims. As such, there is insufficient evidentiary support for the
determination that the present claims are patentably indistinguishable from
the copending claims of Application No. 13/433,021.
Rejection 3: Obviousness over Jobe, Okutani, and Stevens
Claims 1, 5, 8, and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jobe in view of Okutani and Stevens. The Examiner finds
Jobe discloses a ruminant feed composition including lysine encapsulated
with a coating material which is a lipid having a melting point between
about 0°C and about 40°C. Ans. 5. The Examiner further finds Jobe
discloses that the lipid may be hydrogenated vegetable oil, stearic acid, or
palmitic acid. Id. at 6. The Examiner acknowledges that Jobe fails to
disclose the amount of fatty acid in the coating material being at least 90
wt% of the total weight of the coating. Id.
The Examiner, therefore, turns to Okutani, finding that this reference
teaches coating lysine with a protective material selected from hardened
vegetable oils or fatty acids. Ans. 6. The Examiner also finds Okutani
teaches stearic and palmitic acids as possible fatty acids for use as a
protective material in an amount between 20-98 wt% and 0.1-50 wt%. Id.
The Examiner finds that the amount recited in claim 1, i.e., at least 90 wt%
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of stearic and palmitic acids, falls within the ranges taught in Okutani and
concludes that it would have been obvious to optimize the coating material
amounts by routine experimentation. Id. at 7, citing In re Aller, 220 F.2d
454, 456 (CCPA 1955) andin re Peterson, 315 F.3d 1325, 1330 (Fed. Cir.
2003).
Furthermore, the Examiner acknowledges that Jobe also fails to
disclose that the lysine core material is lysine sulfate. Ans. 7. However, the
Examiner finds Stevens discloses lysine salts, including lysine hydrochloride
and lysine sulfate, for inclusion in animal feed compositions. Id. The
Examiner concludes that it would have been obvious to use lysine sulfate in
Jobe as modified by Okutani as such lysine salts are known to be
interchangeable as taught by Stevens. Id. at 8.
Appellants argue, inter alia, that the Examiner's finding that Okutani
teaches use of the claimed fatty acids, i.e., stearic and palmitic acids, in the
coating material in an amount from 20-98 wt% is erroneous. Appeal Br. 18.
In this regard, Appellants contend that the Examiner conflates two separate
teachings in Okutani at paragraphs 42 and 43 and fails to consider the
entirety of Okutani' s disclosure. Id. at 19. In particular, Appellants urge
that Okutani's paragraph 43 limits the use of stearic and/or palmitic acids to
a range of 0.1-50 wt%, preferably 1--40 wt%. Id. Appellants urge that the
range recited in Okutani's paragraph 42 can only refer to the amount of
members of the wax group recited in the sentence preceding the sentence
setting forth the 20-98 wt% range, or to the protective material at the
beginning of this paragraph. Id. at 20.
Appellants further contend that a review of Okutani' s examples
supports this view. Appeal Br. 20-22. Appellants assert that because all but
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one of Okutani' s examples has amounts of stearic and palmitic acids well
below 20 wt%, the Examiner's reading of Okutani's paragraph 42 would
exclude all but one of the examples, whereas all the examples fall within the
range disclosed in paragraph 43. Id. Moreover, Appellants note that even
the one example within the range set forth in Okutani's paragraph 42 is
outside Okutani's preferred 30-90 wt% range. Id. Therefore, according to
Appellants, when the entirety of Okutani as a whole is considered, the
ordinary artisan would understand Okutani to disclose the amount of
aliphatic monocarboxylic acids including stearic and palmitic acids is
selected in a range of 0.1-50 wt%, preferably 1--40 wt%. Id.
Appellants' argument is persuasive of reversible error. Okutani' s
paragraph 42 begins by reciting in its first sentence, that to produce a
protective material, a member of hardened animal fats can be employed.
Okutani i-f 42. The second sentence in this paragraph recites that stearic and
palmitic acids are "[a ]vailable as members of linear or branched, saturated or
unsaturated aliphatic monocarboxylic acids having 12 to 22 carbon atoms."
Id. The third sentence of this paragraph recites that monoester or diester of a
saturated or unsaturated fatty acid in combination with glycerin are
"[a]vailable as a member of fatty acid esters." Id. The fourth sentence of
this paragraph recites a number of waxes are "[a]vailable as a member of
wax group." Id. Finally, the fifth sentence recites "[a]n amount of use is
selected in a range of 20 to 98% by weight, preferably 30 to 90% by
weight." 16 Id.
16 Although not raised by either the Examiner or Appellants, we are mindful
that no basis has been provided for the weight percentages disclosed in
Okutani's paragraphs 42 and 43, i.e., based on the total weight of the coating
or the total weight of the coated particles.
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This last sentence does not specify or otherwise indicate which of the
materials recited in the preceding sentences it is meant to limit. Thus,
without reference to the remaining disclosure of Okutani, it is not
unreasonable to find that a person of ordinary skill in the art would have
read the last sentence of paragraph 42 as applying to each and every material
earlier discussed within this paragraph. However, references must be
evaluated by ascertaining the facts fairly disclosed therein as a whole. In re
Shuman, 361F.2d1008, 1012(CCPA1966). Each reference cited by the
Examiner 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); accord Nat'! Steel Car, Ltd. v. Canadian Pac.
Ry., Ltd., 357 F.3d 1319, 1336-37 (Fed. Cir. 2004).
Here, we have not only paragraph 42 before us, but also the remainder
of Okutani's disclosure, as well as the teachings of Jobe and Stevens.
However, because the Examiner makes no finding that Jobe or Stevens
supports use of stearic and palmitic acids in an amount of at least 90 wt% of
the total weight of the coating, and Appellants do not present any argument
directed to Jobe or Stevens in this regard, we limit our discussion to
Okutani. 17 As Appellants assert, Okutani's paragraph 43 begins by reciting
stearic and palmitic acids or mixtures thereof as "[a]vailable as a member of
linear or branched, saturated or unsaturated aliphatic monocarboxylic acids
having 12 to 22 carbon atoms and their salts." Okutani i-f 43. The next
17 However, we note that the interpretation of Okutani's disclosure set forth
herein is consistent with Jobe's disclosure to combine a lipid, e.g., stearic
and/or palmitic acids, with a hydrophobic, high melting point compound to
produce a coating providing significant protection for nutritional ingredients
in a feed composition. Jobe i-f 14.
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sentence recites "[t]he amount of use is selected in a range of0.1to50% by
weight, preferably 1 to 40% by weight." Id. In addition, as Appellants
assert, all but one of Okutani' s inventive examples include stearic and/ or
palmitic acids in amounts considerably less than the lower limit of the range
recited in paragraph 42, yet all these examples fall within the range recited
in paragraph 43. Id. i-fi-147-55. Further, each of these examples yields
release ratios greater than 80%. Id. i1 57, Table 1.
Although the Examiner correctly states that non-preferred
embodiments are part of the prior art teaching, here it is the scope of the
non-preferred and preferred teachings that is in question. That paragraph 42
sets forth a range at the end after setting forth four broad categories of
materials, while paragraph 43 sets forth a range after only a single category
of materials, supports the view that the first range from paragraph 42 covers
the aggregate or combination of those four materials and the second range
from paragraph 43 limits the amount of aliphatic monocarboxylic acids
having 12 to 22 carbon atoms, e.g., the amount of stearic and palmitic acids,
present in the coating. In other words, the amount of stearic and palmitic
acids in any coating within Okutani's disclosure is 0.1-50 wt%, even though
the aggregate of any of the four categories of materials recited in paragraph
42 (including aliphatic monocarboxylic acids) ranges from 20-98 wt%.
This interpretation is consistent with Okutani' s remaining disclosure.
As Appellants contend, the amounts of stearic and palmitic acids in
Okutani's inventive examples primarily fall well below the range recited in
paragraph 42 (all but one), yet all fall within the range recited in paragraph
43. Moreover, we note that Okutani teaches preparing a coating
composition by melting one of a hardened animal fat, a hardened vegetable
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oil, and a wax group, with lecithin and one or more aliphatic
monocarboxylic acids. Okutani i-fi-125, 31, and 32. Given the entirety of
Okutani's disclosure, we are persuaded that Okutani not only does not
disclose use of stearic and palmitic acids in an amount of at least 90 wt% of
the total weight of the coating, but actually limits the amount of these fatty
acids to no more than 50 wt% as disclosed in paragraph 43.
Based on this interpretation of Okutani' s disclosure, we next must
decide whether a preponderance of the evidence supports the Examiner's
determination that it would have been obvious to have optimized the amount
of stearic and palmitic acids in the coating composition so as to arrive at an
amount within the range recited in claim 1, under the doctrines expressed in
Aller and Peterson. While optimization through routine experimentation has
been held to have been within the ordinary skill in the art and, therefore, the
optimized result would have been prima facie obvious, such optimization is
generally restricted to the range disclosed in the prior art and, under certain
circumstances, to values sufficiently close to the disclosed range such that
the ordinary artisan would have a reasonable expectation that the properties
of compositions sufficiently close to the range would be the same or similar
to the properties of compositions within the range. Peterson, 315 F.3d at
1329; see also In re Sebek, 465 F.2d 904, 907 (CCPA 1972) ("Where, as
here, the prior art disclosure suggests the outer limits of the range of suitable
values, and that the optimum resides within that range, and where there are
indications elsewhere that in fact the optimum should be sought within that
range, the determination of optimum values outside that range may not be
obvious.").
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We note that the range supported by Okutani, 0.1-50 wt%, is
significantly divergent from the range recited in claim 1, i.e., at least 90
wt%. In addition, the Examiner has not established that the claimed and
prior art ranges are in such close proximity to one another that one skilled in
the art would have expected them to impart the same or similar properties.
Under these circumstances, we cannot conclude that the Examiner has met
the minimum threshold of establishing obviousness under 35 U.S.C.
§ 103(a). See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); KSR Int'!
Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)). Accordingly, we reverse the Examiner's
rejection of claims 1, 5, 8, and 10 under 35 U.S.C. § 103(a) over Jobe in
view of Okutani and Stevens for the reasons given above and presented by
Appellants.
Rejections 4--8: Obviousness over the combination of Jobe, Okutani, and
Stevens, along with additional tertiary prior art
Each of these rejections rely on the same combination of Jobe,
Okutani, and Stevens as set forth in Rejection 3, and in particular, on the
erroneous interpretation of Okutani' s disclosure. Because the Examiner
does not rely on any of the tertiary prior art to remedy the deficiency in the
combination of Jobe, Okutani, and Stevens discussed above, we reverse each
of these rejections for the same reasons given above and presented by
Appellants.
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Rejection 9: Obviousness over the combination of Gately, Okutani,
Cummings, and Jobe
This rejection relies on the same erroneous interpretation of Okutani
as in Rejection 3. Accordingly, we reverse this rejection for the same
reasons given above and presented by Appellants.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 1, 5-8, 10, 14--17, 19-21, 23-25, and 27 is reversed.
REVERSED
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