Ex Parte Yamka et alDownload PDFPatent Trial and Appeal BoardJun 10, 201612876451 (P.T.A.B. Jun. 10, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/876,451 09/07/2010 23909 7590 06/14/2016 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. 8139-01-HL 1362 EXAMINER SASAN, ARADHANA ART UNIT PAPER NUMBER 1615 NOTIFICATION DATE DELIVERY MODE 06/14/2016 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 Appeal2013-010044 Application 12/876,451 Technology Center 1600 Before ERIC B. GRIMES, MELANIE L. McCOLLUM, and RICHARD J. SMITH, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a method of enhancing a cat's immune response, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. STATEMENT OF THE CASE Claims 11-21 are on appeal. Claims 11 and 13 are representative and read as follows: 1 Appellants identify the Real Party in Interest as Hill's Pet Nutrition, Inc., a subsidiary of Colgate-Palmolive Company. (Br. 2.) Appeal2013-010044 Application 12/876,451 11. A method to enhance the immune response of a feline to an antigen comprising administering to the feline or to the mother of the feline while the feline is in utero, a pet food composition comprising: about 200 to about 1200 IU I kg vitamin E; about 50 to about 500 ppm vitamin C; about 0.1 % to about 0.7% EPA; and about 0.1 % to about 0.5% DHA. 13. The method of claim 11 wherein the feline is born from a queen fed the composition during pregnancy. "EPA" is an abbreviation for eicosapentaenoic acid, and "DHA" is an abbreviation for docosahexaenoic acid, both of which are omega-3 fatty acids. (Zicker2 i-f 19.) DISCUSSION The Examiner has rejected all of the claims on appeal under 35 U.S.C. § 103(a) as obvious based on Zicker and Heaton. 3 (Ans. 2.) The Examiner finds that Heaton teaches a method of strengthening the immune response of a cat by feeding a diet comprising vitamins E and C (Ans. 3), and Zicker teaches cat food comprising vitamin E, vitamin C, DHA, and EPA in amounts within the ranges recited in claim 11 (id. at 4). The Examiner concludes that it would have been obvious to use Zicker' s cat food in Heaton's method of strengthening immune response. (Id. at 5.) We agree with the Examiner that claim 11 is unpatentable based on Zicker and Heaton. We find, in fact, that Zicker anticipates claim 11. Zicker provides a working example in which aged cats were fed either a test 2 Zicker et al., WO 2005/006877 Al, Jan. 27, 2005. 3 Heaton, GB 2367489 A, Apr. 10, 2002. 2 Appeal2013-010044 Application 12/876,451 food or a control food for thirty days. (Zicker i-fi-126, 28.) The test food comprised, among other things, vitamin E (1178 IU/kg), vitamin C (175 ppm), docosahexaenoic acid (0.123 wt%), and eicosapentaenoic acid (0.11 wt%). (Id. i128 (Table 2).) Thus, Zicker describes a method of feeding a feline a pet food composition comprising each of the components of claim 11, in amounts that are within the recited ranges. Claim 11 is therefore anticipated by Zicker, and "[i]t is well settled that 'anticipation is the epitome of obviousness."' In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002). Appellants argue, however, that "Zicker does not contain any disclosure whatsoever of the use of its compositions for enhancing an immune response of a feline to an antigen." (Br. 4.) This argument is unpersuasive. The preamble of claim 11 recites the intended purpose of carrying out the claimed process, but that intended purpose does not limit the scope of the claim. Cf Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1375 (Fed. Cir. 2001), in which preamble language stating that the method was "for reducing hematologic toxicity" was held not to limit the claim. "The steps of the ... method are performed in the same way regardless whether or not the patient experiences a reduction in hematologic toxicity, and the language of the claim itself strongly suggests the independence of the preamble from the body of the claim." (Id.) The same is true here: the step of feeding a cat the food recited in claim 11 is performed the same way regardless of whether the cat (or its 3 Appeal2013-010044 Application 12/876,451 future kitten) experiences an enhancement of immune response to an antigen. Claim 11 reads on feeding a cat the recited food for any purpose. With regard to claim 13, Appellants argue that nowhere does Heaton discuss a method to enhance the immune response of a feline to an antigen wherein the feline is born from a queen fed the composition during pregnancy. There is simply nothing in Heaton to suggest that if the compositions disclosed therein were fed to a mother the technical effect on its offspring would be achieved. (Br. 10.) We will affirm the rejection of claim 13, which is directed to "[t]he method of claim 11 wherein the feline is born from a queen fed the composition during pregnancy." (Br. 12.) Heaton discloses a method of overcoming oxidative stress and enhancing vaccine efficacy in domestic dogs and cats through nutrition. (Heaton 2: 1--4.) Heaton discloses that "at periods in an animal[']s life, such as in newborns, elderly animals or pregnant females ... animals will be immunocompromised and as a result vaccines will be less efficacious." (Id. at 15:8-11.) Heaton discloses nutritional supplements, preferably in petfood, that include vitamin C and vitamin E to enhance the immune response. (Id. at 11:1-3, 13-20; 15:12-14.) The specific formulations set out in Heaton also contain taurine, lutein, beta-carotene, and lycopene, but Heaton discloses that those are optional ingredients. (See id. at 8:2-3 ("[T]he invention may include the administration of an amount of taurine. "); id. at 9: 10-11 ("[T]he invention may further include the administration of an amount of a carotenoid."); 9:21-22 ("Common carotenoids include[] beta-carotene, alpha-carotene, lycopene, lutein, zeaxanthin and astaxanthin.").) 4 Appeal2013-010044 Application 12/876,451 As discussed above, Zicker discloses a cat food comprising vitamin C and vitamin E, as well as EPA and DHA. Zicker does not disclose the use of its cat food to enhance the immune response, but it would have been obvious to use it in Heaton's method because Zicker's food contains vitamin C and vitamin E, and Heaton discloses that the combination of those vitamins has the potential to act synergistically. (Heaton 7:14--15.) It would have been obvious to practice Heaton's method on a pregnant cat because Heaton discloses that pregnant cats are immunocompromised. Heaton does not disclose the intended purpose recited in claim 13- enhancing the immune response of the kittens in utero---but, as discussed above with respect to claim 11, that intended purpose does not limit the scope of the claim. See Bristol-Myers Squibb, 246 F.3d at 1375. SUMMARY We affirm the rejection of claims 11-21under35 U.S.C. § 103(a) based on Zicker and Heaton. 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 5 Copy with citationCopy as parenthetical citation