Ex Parte Yamka et alDownload PDFPatent Trial and Appeal BoardMay 10, 201612528164 (P.T.A.B. May. 10, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/528, 164 08/21/2009 23909 7590 05/12/2016 COLGATE-PALMOLIVE COMPANY 909 RIVER ROAD PISCATAWAY, NJ 08855 FIRST NAMED INVENTOR Ryan Michael Yamka 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. 8173-00-HL 1992 EXAMINER N ANOV A, SVETLANA M ART UNIT PAPER NUMBER 1627 NOTIFICATION DATE DELIVERY MODE 05/12/2016 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): Patent_Mail@colpal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RYAN MICHAEL YAMKA, KIM GENE FRIESEN, and STEVEN CURTIS ZICKER1 Appeal2014-000424 Application 12/528, 164 Technology Center 1600 Before LORA M. GREEN, ULRIKE W. JENKS, and TIMOTHY G. MAJORS, Administrative Patent Judges. MAJORS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to compositions and methods of administering compositions for the improvement of neurological development of animals, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 Appellants identify the Real Party in Interest as Hill's Pet Nutrition, Inc. (a wholly-owned subsidiary of Colgate-Palmolive Company). (Br. 2.) Appeal2014-000424 Application 12/528, 164 STATEMENT OF THE CASE "The present invention relates to compositions and methods for enhancing the neurological development of mammals." (Spec. i-f 2) "It is contemplated ... that any animal whose diet may be controlled by humans may benefit from feeding the [disclosed] formulations . . . . Preferably, the animal is a feline, either a kitten, or adult cat." (Spec. i-f 17.) Claims 1, 2, 6, and 10-21 are on appeal. Claims 1 and 11 are illustrative and reads as follows: 1. A pet food composition comprising: about 0.1 % to about 0.7% DHA; about 2400 ppm to about 7500 ppm choline; about 200 IU/kg to about 1200 IU/kg vitamin E; about 50 to about 500 ppm vitamin C; about 2.5 g/1000 kcal to about 7g/1000 kcal lysine; about 0.1 % to about 0.7% EPA; about 50 ppm to about 200 ppm manganese; and about 0.5% to about 1.6% methionine. 11. A method to enhance the neurologic development of a feline comprising administering to the feline or to the mother of the feline while the feline is in utero the composition of claim 1. 2 Appeal2014-000424 Application 12/528, 164 The claims stand rejected as follows: Claims 1, 2, 6, and 10-21 are rejected under 35 U.S.C. § 103(a) as obvious over Zicker, 2 W olframAlpha, 3 Applicants' admitted prior art, 4 AAFC0,5 and Homstra. 6 Claims 13-17 are rejected under 35 U.S.C. 103(a) as obvious over Zicker, WolframAlpha, Applicants' admitted prior art, AAFCO, and Homstra, in further view of Jones. 7 DISCUSSION Issues There are two issues, which we address together: whether the Examiner established by a preponderance of the evidence that claims 1, 2, 6, and 10-21 would have been obvious over Zicker, W olframAlpha, Applicants' admitted prior art, AAFCO, and Homstra; and whether the Examiner established by a preponderance of the evidence that claims 13-1 7 2 Zicker et al., WO 2006/072084, published Jul. 6, 2006 ("Zicker"). 3 W olframAlpha® computational knowledge engine conversions, http://www.wolframalpha.com ("W olframAlpha"). 4 Applicant's admitted prior art of commercial compositions A, Al and B. (Spec. 10.) ("Applicants' admitted prior art"). 5 AAFCO Cat Food Nutrient Profiles, 2003 Official Publication, http://maxshouse.com/nutrition/aafco_cat_food_nutrient_profiles.htm ("AAFCO"). 6 Homstra et al., Essential fatty acids in pregnancy and early human development, 61 EUROPEAN JOURNAL OF OBSTETRICS & GYNECOLOGY AND REPRODUCTIVE BIOLOGY 57----62 (1995) ("Homstra"). 7 Barb Jones, FAQ: Cat Reproduction, Sacramento Area Animal Coalition ("Jones"). 3 Appeal2014-000424 Application 12/528, 164 are obvious over Zicker, W olframAlpha, Applicants' admitted prior art, AAFCO, and Homstra, in further view of Jones. Findings of Fact 1. Zicker teaches food compositions and methods for enhancing the life of a growing animal." (Zicker Abstract.) Zicker teaches "feeding the animal an amount of the composition effective to enhance the animal's quality of life, wherein enhanced quality of life is evidenced by an improvement in one or more characteristics selected from the group consisting of trainability, cognitive function, motor skills coordination or agility, retinal development, cartilage protection, maintenance of muscle mass, and skin and pelage quality." (Zicker i-f 10.) In Zicker, "'growing animals' means animals that are in the growth stage of life. For small or regular breed canines, as well as for felines, the growth stage is from birth to one year of age." (Zicker i-f 19.) 2. Zicker teaches the method comprises feeding a growing feline a composition in an amount effective to enhance the feline' s trainability and cognitive function. The composition comprises: (a) at least one of the following: (i) at least about 0.05% (or from about 0.05% to about 0.40%, or from about 0.1 % to about 0.40%, or from about 0.1 % to about 0.24%) DHA, and (ii) at least about 0.1 % (or from about 0.1 % to about 1 %, or from about 0.2% to about 1 %, or from about 0.2% to about 0.62%) of a mixture ofDHA and EPA, 4 Appeal2014-000424 Application 12/528, 164 (b) at least about 15% (or from about 15% to about 70%, or from about 30% to about 45%, or from about 30% to about 43%, or from about 43% to about 45%) protein, (c) at least about 4% (or from about 4% to about 45%, or from about 9% to about 28%,or from about 9% to about 25%, or from about 25% to about 28% fat, ( d) at least one of the following: (i) at least about 250 ppm (or from about 250 ppm to about 1500 ppm, or from about 500 ppm to about 1500 ppm, or from about 500 ppm to about 1100 ppm) vitamin E, (xxiv) at least about 5 ppm (or from about 5 ppm to about 225 ppm, or from about 10 ppm to about 225 ppm, or from about 10 ppm to about 150 ppm) vitamin C, (xxv) at least about 500 ppm (or from about 600 ppm to about 3000 ppm, or from about 1000 ppm to about 3000 ppm, or from about 1000 ppm to about 2150 ppm) taurine, and (xxvi) at least about 0.05 ppm (or from about 0.05 to about 3. 0 ppm, or from about 0 .1 ppm to about 3 .0 ppm, or from about 0.1 ppm to about 1.6 ppm) beta-carotene. ( e) at least about 500 ppm (or from about 500 ppm to about 7500ppm, or from about 1200 ppm to about 7500 ppm, or from about 1200 ppm to about 5000 ppm, or from about 2400 to about 5000 ppm) choline, ( f) at least about 0. 5 ppm (or from about 0. 5 ppm to about 7 5 ppm, or from about 1. 0 ppm to about 7 5 ppm, or from about 1.0 ppm to about 50 ppm) thiamine, and (g) at least about 0.5% (or from about 0.5% to about 5%, or from about 1 % to about 5%, or from about 1 % to about 3%) egg powder. (Zicker i-f30.) 5 Appeal2014-000424 Application 12/528, 164 3. Zicker teaches that "compositions for use in the present invention further comprise at least one nutrient selected from the group consisting of manganese, methionine, cysteine, mixtures of methionine and cysteine, L- camitine, lysine, and arginine." (Zicker i-f 31 (emphasis added).) In addition, Zicker teaches [ w ]hen the composition is an animal food, vitamins and minerals are included in amounts required to avoid deficiency and maintain health. These amounts are readily available in the art ... [and] the American Feed Control Officials (AAFCO), for example, provides recommended amounts of such ingredients for dogs and cats. See American Feed Control Officials, Inc., Official publication, pp. 126-140 (2003). (Zicker i-f 33; see also, id. at i-f 37.) 4. Zicker teaches the benefits of" [ e] ssential fatty acids, consisting of omega-3 and omega-6 polyunsaturated fatty acids, [which] are critical nutrients for the health of an animal ... and therefore must be consumed in an animal's diet. See, e.g., Homstra, G., et al., 'Essential fatty acids in pregnancy and early human development."' (Zicker i-f 4.) 5. Homstra is cited and incorporated by reference in Zicker (Zicker i-fi-1 4, 50), and teaches essential fatty acids "are vitally important structural elements of cell membranes and, therefore, instrumental in the formation of new tissues." (Homstra Abstract.) Homstra identifies "two families of essential fatty acids, the (n-6) and the (n-3) family" and teaches that the "parent EPA" in the (n-6) family is linoleic acid." (Homstra pp. 57-58.) 6. AAFCO teaches "cat food nutrient profiles" and identifies "growth and reproduction minimum" amounts of those nutrients including: 6 Appeal2014-000424 Application 12/528, 164 methionine at 0.62%, lysine at 3.0 g per 1000 kcal, linoleic acid at 0.5%, and manganese at 7.5 mg/kg (7.5 ppm). (AAFCO pp. 1-3.) 7. Jones provides frequently asked questions regarding cat reproduction. Jones teaches that "[f]emale cats typically reach sexual maturity when they are about 4.5-7.0 lb ... or between five to nine months of age." (Jones p. 1.) Jones teaches further that "it is possible for female kittens as young as four months to go into heat and become pregnant!" (Id.) Jones additionally discloses that the gestation period for cats is "56 to 71 days" and that the "average length is 67 days." (Id.) Principles of Law "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCP A 1955). Indeed, a "prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art." In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Analysis The Examiner rejected all the pending claims as obvious over Zicker, AAFCO, WolframAlpha (merely for unit conversion), Applicants' admitted prior art, and Homstra. The Examiner finds that "Zicker discloses in a single embodiment all the ingredients [of claim 1], with overlapping ranges ... , and discloses manganese, methionine, and lysine (except as to their ranges." (Final Act. 4---6.) As for the specific amounts of manganese, 7 Appeal2014-000424 Application 12/528, 164 methionine, and lysine, the Examiner finds that "Zicker states that '[t]hese amounts are readily available in the art." (Final Act. 9.) The Examiner concludes "it would have been obvious to a person of skill in the art the modify the composition of Zicker, to include the specific amounts of manganese, methionine, [and] lysine ... that are readily available in the art, such as disclosed in the Applicant's admitted prior art and the AAFCO Cat Food." (Id. at 11.) According to the Examiner, "a person of skill in the art would have been motivated to do so with a reasonable chance of success in view of the teachings of Zicker that these amounts are readily available in the art, and would have accordingly looked to these amounts in other cat foods compositions, accordingly, i.e., the closest prior art." (Id.) The Examiner finds that the Zicker "composition is explicitly stated by Zicker to be for feeding a feline in an amount effective to enhance the feline's trainability and cognitive function. ([0030-33])." (Id. at 19.) Accordingly, The Examiner finds that "Zicker clearly and explicitly provides a design need and market pressure for the skilled artisan to use a commonsensical approach to arrive at the ranges of these ingredients" based, for example, on an "optimization rationale under Aller." (Id. at 20.) Appellants argue the Examiner's analysis is legally flawed. More specifically, Appellants contend the Examiner has "failed to provide an articulated rationale for why one of ordinary skill in the art would have combined the myriad of various scopes disclosed in Zicker in order to arrive at the Applicants' claimed invention" and further that the Examiner "failed 8 Appeal2014-000424 Application 12/528, 164 to establish that there were a finite number of identifiable and predictable solutions disclosed in Zicker." (Br. 5, 8.)8 Appellants' arguments are not persuasive. As the Examiner correctly points out, Zicker discloses a pet food composition that includes all of the ingredients of claim 1. (FF 2, 3.) With the exception of lysine, manganese, and methionine, the ranges of the ingredients in Zicker and claim 1 overlap. (Id.) As for lysine, manganese, and methionine, those are well known ingredients for cat foods as recognized in at least Zicker and AAFCO. (FF 3, 6.) And AAFCO discloses amounts for lysine, manganese, and 8 Appellants also argue that the "commercial" compositions described in Example 2 of the Specification are not "identified as 'prior art."' (Br. 3--4). Thus, 1A1ppellants argue, it \~1as inappropriate for the Examiner to cite those compositions in the rejections. The "commercial" compositions in Example 2 are identified in the Specification as "being available from commercial sources" and "the same brand of food, but produced in different lots." (Spec. i-f 36). From this, the Examiner inferred those compositions are prior art. (Ans. 16-22.) Whether the compositions are prior art is information that would seem to be uniquely in control of Appellants, who owe a duty of good faith and candor in proceedings before the Patent Office. (Ans. 20.) Nevertheless, we need not decide if the "commercial" compositions are, in fact, prior art. The Examiner cited those compositions to illustrate it was well known to use methionine, manganese, and linoleic acid in cat food compositions (methionine and manganese appearing in these "commercial" compositions in amounts within the range of claim 1 ). (Ans. 9-11, 20-21; Br. 7.) Other art of record, such as AAFCO, discloses use of methionine, manganese, and linoleic acid in cat food sufficient to sustain the present rejections. See generally, In re Bush, 296 F.2d 491, 496 (CCPA 1961) (the Board may rely on less than all of the references relied upon by Examiner). 9 Appeal2014-000424 Application 12/528, 164 methionine in cat food that overlap with the claimed ranges, or nearly so. 9 We illustrate the disclosures in Zicker and AAFCO (regarding lysine, manganese, and methionine) compared to claim 1 in the table below: DHA (about 0.1---0.7%) Choline (about 2400- 7500 ppm) Vitamin E (about 200- 1200 IU/kg = 133-533 Ill Vitamin C (about 50- 500 ppm) Lysine (about 2.5-7 /1000 kcal) EPA (about 0.1---0.7%) DHA (about 0.05- 0.4%) Choline (about 500- 7500 ppm) Vitamin E (250-1500 ppm) Vitamin C (about 5- 225 ppm) Lysine EPA & DPA mixture (about 0.1-1 %) Manganese (about 50- Manganese 200 Ill Methionine (about 0.5- Methionine 1.6%) Lysine (minimum 3.00 /1000 kcal) Manganese (minimum 7 .5 Ill Methionine (minimum 0.62% to maximum 1.5%) Contrary to Appellants' argument, the Examiner has articulated a rationale for why the person of ordinary skill in the art would have chosen the composition of Zicker as a starting point. Appellants argue that the Examiner's focus on this composition "does not explain why the Examiner 9 Although the 7.5 ppm of manganese in AAFCO is below the claimed range of about 50-250 ppm, AAFCO discloses it is a "minimum" amount. (FF 6.) 10 Appeal2014-000424 Application 12/528, 164 honed in on that scope, to the exclusion of any of the specific formulations disclosed in Zicker." (Br. 5.) But, as the Examiner notes, the relied-upon composition in Zicker and the composition of claim 1 are addressed to the same problem - neurological development of a cat. (Final Act. 19; compare Zicker i-f 30 with Spec. i-f 27.) The Examiner's selection of the particular composition of Zicker, therefore, is supported by evidence and an explanation with a rational underpinning. Moreover, Zicker' s teaching of the need for cat foods "to enhance the feline's trainability and cognitive function" establishes a design and market need, and provides a reason to believe the skilled artisan would, as a matter of routine optimization, have predictably designed a composition within the scope of the present claims based on the ingredients and ranges already known in the art. (Final Act. 20.) In re Peterson, 315 F.3d at 1329-30 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.") In making these contentions, and supporting them with reasoning and evidence, the Examiner met their burden. We similarly reject Appellants' argument that the possibilities in Zicker are too numerous to sustain the obviousness rejections. (Br. 9.) Instead, we agree with the Examiner that the optimization required is within the capabilities of the skilled person, absent evidence to the contrary. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (an obviousness analysis "can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.") As discussed, Zicker discloses all 11 Appeal2014-000424 Application 12/528, 164 eight of the ingredients in the composition of claim 1, and teaches ranges that encompass the claimed amounts for five of those ingredients. (FF 2, 3.) AAFCO teaches amounts of well-known cat food ingredients lysine, manganese, and methionine within or close to Appellants' claimed ranges. (FF 6.) Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004) (internal citations omitted) ("[W]here there is a range disclosed in the prior art, and the claimed invention falls within that range, there is a presumption of obviousness. But the presumption will be rebutted if it can be shown: ( 1) That the prior art taught away from the claimed invention ... or (2) that there are new and unexpected results relative to the prior art.") Based on the existing record, which has not provided sufficient evidence of teaching away, or of criticality, or unexpected results of the claimed ranges, we agree with the Examiner's determination that claim 1 is obvious. 10 Claims 2, 6, and 10 have not been argued separately and fall with claim 1. 37 C.F.R. § 41.37( c )(1 )(iv). Claims 20 and 21 include the additional ingredient of linoleic acid. The Examiner cites to Zicker's teaching of the benefits of omega-3 and omega-6 fatty acids, but notes that linoleic acid is not expressly identified in 10 Appellant states that "claimed composition, which is useful for enhancing neurological development, comprises eight recited interdependent components, where the level of each is influenced by and dependent upon the level of the other components of the composition." (Br. 9.) Such attorney argument does not take the place of objective evidence, and fails to persuade us that the claims are nonobvious. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). 12 Appeal2014-000424 Application 12/528, 164 its compositions. (Final Act. 4---6.) The Examiner further cites to AAFCO as teaching the use of linoleic acid in cat foods, and cites to Homstra as teaching the "essentiality of [omega-3 and omega-6 fatty acids] for reproductive, brain and visual functions ... [with] special emphasis on linoleic acid." (Id. at 7.) The Examiner concludes it would have been obvious to modify the compound of Zicker to include linoleic acid as taught in AAFCO and Homstra for at least the reason that the references recognize it as "a critical nutrient for the health of an animal, that is essential for reproductive, brain and visual functions, and that it is a precursor to other longer chain fatty acids in the body." (Id. at 13.) The Appellants' principle counterargument is that Homstra is non- analogous art. (Br. 8. ("Homstra, however, seems relevant simply for background on the importance for essential fatty acids with respect to humans, not necessarily felines.")). We disagree. Homstra is cited (indeed incorporated by reference) in Zicker as teaching "[e]ssential fatty acids ... are critical nutrients for the health of an animal ... [that] cannot be made in sufficient amounts to elicit benefits and therefore must be consumed in an animal's diet." (FF 4, 5; Zicker i-fi-14, 50.) Like the present application, Zicker is concerned with pet foods related to the health and neurological development of cats. (FF 1--4.) Because Zicker and the present application share common inventors, Homstra most likely would have been considered by those inventors in addressing essentially the same problem. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (a reference is reasonably pertinent and thus analogous if it "would have commended itself to an inventor's attention in considering his problem."). Homstra is reasonably pertinent to 13 Appeal2014-000424 Application 12/528, 164 the problem addressed in the present application. The arguments to the contrary are not persuasive. Appellants' only remaining argument with respect to linoleic acid is that the "concentration disclosed by the AAFCO reference is well below what is currently claimed." (Br. 9.) We reject this argument for reasons similar to those above. AAFCO discloses a minimum of 0.5% of linoleic acid (FF 6) while claims 20 and 21 recite "about 2.5% to about 6% linoleic acid." We find that it would have been obvious to modify the amount of linoleic acid in AAFCO in a composition of Zicker as a matter of routine optimization, particularly considering the importance attributed to such essential fatty acids as disclosed in Zicker and Homstra. (FF 4---6; Final Act. 13.) Appellants offer additional arguments with respect to method claims 11-20, which generally recite administering the composition of claim 1 to a feline (e.g., a pregnant feline, a feline in utero, a kitten prior to or after weaning). These arguments, however, are little more than recitation of the claim language and statements that the claims are not obvious. (Br. 11 ("the method to enhance the neurologic development of a feline comprising administering to the feline or to the mother of the feline while the feline is in utero the composition of claim 1 would not be obvious.").) The Examiner, on the other hand, finds that "Zicker discloses that the growth stage of the growing animal is from birth to one year of age" and "is inclusive of a kitten, per Applicant's claims 11, 12, 18[,] and 19." (Ans. 8, 35; Final Act. 26-28.) The Examiner finds that "[a] person of skill in the art would further know that a cat is capable of becoming pregnant during the 14 Appeal2014-000424 Application 12/528, 164 specified growth stage of Zicker. As such, Zicker is applicable to both newly born kittens, as well as cats, which can become pregnant and carry a fetus in utero." (Ans. 35.) In discussing claims 13-17, the Examiner further points to Jones as teaching that "female cats typically reach sexual maturity between five and nine months of age, and that it is further also possible for female kittens as young as four months to go into heat and become pregnant." (Ans. 14.) 11 The Examiner then concludes, "the growth stage of Zicker is inclusive of the growth age before pregnancy, as well as the growth age during which a cat can become pregnant and give birth. Accordingly, in view of the teachings of Zicker, further in view of Jones, a person of skill in the art would be motivated to give the composition of Zicker to both sexually immature kittens after birth, as well as to sexually mature kittens while they are pregnant." (Id.) The Examiner has the better position. Appellants' arguments do not respond to the substance of the Examiner's rejections. 37 C.F.R. § 41.37(c)(l)(iv) (argument that merely points out what a claim recites is unpersuasive). To the extent Appellants argue Jones "provides no teaching regarding any particular diet or any method to enhance the neurologic development of a feline" (Br. 11 ), that is irrelevant. The diet for neurological development is disclosed in Zicker and the other references, 11 Appellants question the prior art status of Jones (according to Examiner, for the first time on appeal) stating it "seems to be an undated website." (Br. 11.) The Examiner cites to a communication from the website publisher that the Examiner contends "establishes that Jones was available in 2006, and is thus prior art." (Ans. 35.) Appellants did not contest this evidence, so we find the Examiner has sufficiently shown that Jones is prior art. 15 Appeal2014-000424 Application 12/528, 164 whereas the Examiner relies on Jones to support the conclusion that it would have been obvious that feeding such a diet to growing felines includes feeding pregnant and non-pregnant cats and kittens. (FF. 1, 7.) Conclusion of Law We conclude that the Examiner established by a preponderance of the evidence that claims 1, 2, 6, and 10-21 would have been obvious over Zicker, WolframAlpha, Applicants' admitted prior art, AAFCO, and Homstra. We further conclude that the Examiner established by a preponderance of the evidence that claims 13-17 are obvious over Zicker, WolframAlpha, Applicants' admitted prior art, AAFCO, and Homstra, in further view of Jones. SUMMARY We affirm the rejections of claims 1, 2, 6, and 10-21 as obvious. TIME PERIOD FOR RESPONSE 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 16 Copy with citationCopy as parenthetical citation