Ex Parte Zicker et al

Patent Trial and Appeal Board

Jan 8, 2016

12977798 (P.T.A.B. Jan. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/977,798 12/23/2010
23909 7590 01/12/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Steven Curtis Zicker
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.
6493-03-HL 1012
EXAMINER
BAEK, BONG-SOOK
ART UNIT PAPER NUMBER
1621
NOTIFICATION DATE DELIVERY MODE
01112/2016 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 STEVEN CURTIS ZICKER
and KAREN J. WEDEKIND
Appeal2013-006532
Application 12/977,798
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
RICHARD J. SMITH, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a
companion pet diet comprising Vitamin C. The Examiner rejected the
claims as obvious and on the grounds of nonstatutory obviousness-type
double patenting. 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. (see App. Br. 2).
Appeal2013-006532
Application 12/977,798
Statement of the Case
Background
"Companion animals such as dogs and cats seem to suffer from aging
problems" (Spec. 1, 11. 10-11). "It has now been demonstrated that the
presence of significant levels of at least one antioxidant in the diet of an
aged companion pet inhibits the deterioration of the mental capacity of an
aging companion pet" (Spec. 2, 11. 1--4 ).
The Claims
Claims 1-8, 10, 11, 23-25, and 37 are on appeal. 2 Independent claim
1 is representative and reads as follows:
1. A companion pet diet meeting ordinary nutritional
requirements for an aged pet and further comprising a sufficient
amount of an antioxidant or mixture thereof, to inhibit the
deterioration of the mental capacity of an aged companion pet,
wherein the diet comprises at least about 50 ppm of Vitamin C.
The Issues
A. The Examiner rejected claims 1-8, 10, 11, 23-25, and 37 under
35 U.S.C. § 103(a) as obvious over Dzanis, 3 Hamilton, 4 and Sole5 (Ans. 4--
8).
2 Claim 9 was cancelled and claims 12-22, 26-36, and 38
withdrawn (see Response to Non-final Action 3/15/2012).
3 Dzanis, D., The Association of American Feed Control Officials
Dog and Cat Food Nutrient Profiles: Substantiation of Nutritional
Adequacy of Complete and Balanced Pet Foods in the United
States, 124 J. NUTRITION 2535S-2539S (1994).
4 Hamilton, N., US 6,479,069 Bl, issued Nov. 12, 2002.
5 Sole et al., US 6,232,346 Bl, issued May 15, 2001 (hereinafter
"Sole").
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Application 12/977,798
B. The Examiner rejected claims 1-8, 10, 11, 23-25, and 37 on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1, 2, and 4--18 of copending Application No.
11/154,2106 (Ans. 9-10).
C. The Examiner rejected claims 1-8, 11, and 37 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1, 2, 5, and 7-10 of copending Application No. 12/528,153 (Ans. 10-
11 ).
D. The Examiner rejected claims 1---6 and 37 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1, 2, 6, 10, and 21 of copending Application No. 12/528,164 (Ans.
11 ).
E. The Examiner rejected claims 1-8, 10, 11, 23-25, and 37 on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-11 of US 6,914,071 (Ans. 11-12).
A. 35 US.C. § 103(a) over Dzanis, Hamilton, and Sole
The Examiner finds that Dzanis teaches "dog (canine) and cat (feline)
food nutrient profile meeting nutritional requirements for adult, which
comprises protein, fat, sodium, phosphorous, vitamin E, and other nutrients"
(Ans. 4). The Examiner finds that Hamilton teaches improving pet diets and
"that additional nutrients are important in older individuals, including ...
[vitamin] C" (Ans. 4--5). The Examiner finds that Sole teaches vitamin C
supplementation for dogs and cats (Ans. 6).
6 US 11/154,210 issued as US 8,592,478 on Nov. 26, 2013.
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Application 12/977,798
The Examiner finds it obvious to include "additional nutrients
including vitamin C and E [that] are important in older individuals because
many of these nutrients have been found to be deficient in the diets of
elders" (Ans. 7).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion finding obvious a pet food
composition "meeting ordinary nutritional requirements for an aged pet" and
comprising 50 ppm vitamin C as required by claim 1?
Findings of Fact
1. The Specification teaches that the "diet fed to the aging
companion pet, for example canine and feline is the standard normal diet fed
to an animal of that age. Below is a typical diet for a canine of at least 7
years of age.
Table l
[~:~_:·:::::::::~~~:-~~~-~!~~~~~:::::::::::::::::::::::::.[_·:::.·_·_·_·_·_·_·_·_·_·_~~~~~-:-~·-·:_~--~_-:_-:]
i P:n·neln f% c,f drv matter) i 195 !
t~~~~:!~~~::~~~~~:~~:~~~~'.~~~'.~~=:~:=~:~-----------·------"------··10·--------1
j Phosphorous \S·t of dry matter') L~-~----=~:-~---------------J.
1
l Sodium O·iJ of dry n:-iatt:cr) ! 0. 2 j
'-------~- :- ........................................................................ ~
(Spec. 3, 11. 5-11 ).
2. Table 1 of Dzanis teaches adult maintenance minimum nutrient
profiles for dog foods, where the minimum includes 180 g/kg protein (18%
of dry matter), 50 g/kg fat (5% of dry matter), 5 g/kg phosphorus (0.5 % of
dry matter), and 0.6 g/kg sodium (.06% of dry matter) (see Dzanis 2536S,
Table 1).
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Application 12/977,798
3. Table 2 of Dzanis teaches adult minimum nutrient profiles for
cat foods, where the minimum includes 260 g/kg protein (26% of dry
matter), 90 g/kg fat (9% of dry matter), 5 g/kg phosphorus (0.5 % of dry
matter), and 2 g/kg sodium (.2 % of dry matter) (see Dzanis 2537S, Table 2).
4. Hamilton teaches including "an effective amount of a suitable
antioxidant and an effective amount of a camitine in a wide variety of foods
and food supplements. It is a further object of the present invention to
improve the diet of not only humans but also pets such as dogs, cats"
(Hamilton, col. 4, 1. 65 to col. 5, 1. 2).
5. Hamilton teaches that "[a]dditional nutrients are important in
older individuals, including calcium, vitamin D, Vitamins B12, folic acid,
B6, niacin, C or E, iron and zinc. Many of these nutrients have been found
to be deficient in the diets of elders" (Hamilton, col. 8, 11. 26-29).
6. Hamilton teaches a composition with 30 mg of vitamin C in 8
ounces (Hamilton, col. 9, 11. 31--48) that the Examiner finds contains about
150 ppm Vitamin C (Ans. 5).
7. Hamilton teaches "to take into account the different nutritional
needs of older persons, we increase calcium to half the RDA of 1200 mg,
magnesium to 100 mg, and vitamin D to 150 mg" (Hamilton, col. 10, 11. 5-
8).
8. Sole teaches "administering to a mammal an effective amount
of a carrier and a nutritional supplement comprising L-Camitine, Coenzyme
Q 10 (Ubiquinone) and Taurine or its precursors in a single or divided daily
dose. The mammal is preferably one of the group including humans, dogs,
cats and horses" (Sole, col. 13, 11. 21-26).
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Application 12/977,798
9. Sole teaches "a dietary supplement taken in a high protein
formulation ... which may contain ... Vitamin C (ascorbic acid 1000 mg)
.... These doses may vary 25% to 300% for specialized formulations"
(Sole, col. 15, 11. 5-17). The Examiner finds that Sole teaches a supplement
with 1000 ppm Vitamin C (Ans. 6).
Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability." Id. at 417.
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 4--8; FF 1-9) and agree that the
claims are rendered obvious by Dzanis, Hamilton, and Sole. We address
Appellants' arguments below.
Appellants contend that:
Here the Examiner postulates that if the selected materials of
Hamilton and/or Sole were to be combined with those of
Dzanis, then the resulting composition would have the
features alleged for the materials of Hamilton and/or Sole ..
. . However, such circular reasoning cannot provide a
legally sufficient reason as to why one of ordinary skill
would have identified that art, would have selected only
those particular ingredients of Hamilton and/or Sole, and
would have combined them with the composition of Dzanis
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Application 12/977,798
in the manner required to arrive at the presently-claimed
invention.
(App. Br. 7).
We do not find this argument persuasive because Dzanis teaches
ordinary nutritional requirements for companion pets (FF 2-3) that are
similar to the typical aged diet of Appellants' Specification (FF 1). Both
Hamilton and Sole teach nutritional supplements that may be given to pets
(FF 4, 8) and that contain Vitamin C in amounts exceeding 50 ppm (FF 6,
9). Hamilton provides a specific reason to include vitamin C in the diet of
aged pets in teaching that nutrients including Vitamin C "have been found to
be deficient in the diets of elders" (FF 5).
Thus, rather than circular reasoning, the Examiner properly relies on a
specific teaching in Hamilton that provides reasoning and motivation to
incorporate a variety of vitamins including Vitamin C into the diet of elderly
pets to avoid deficiencies, including Vitamin C deficiencies (FF 5).
To the extent that Appellants are contending that selection of the
species of Vitamin C from among the different nutrients is unobvious, we
find this argument unpersuasive because Appellants' claims recite
"comprising" and are therefore open to inclusion of all of the nutrients of
Hamilton and/or Sole with no selection required. Further, it is well settled
that it is a matter of obviousness for one of ordinary skill in the art to select a
particular component from among many disclosed by the prior art as long as
it is taught that the selection will result in the disclosed effect. See Merck &
Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the
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Application 12/977,798
'813 patent discloses a multitude of effective combinations does not render
any particular formulation less obvious.")
Appellants contend that the "skilled person would therefore,
understand that Dzanis does not disclose a pet food composition that meets
the ordinary nutritional requirements for an aged animal, and neither
Hamilton nor Sole cure that defect" (App. Br. 8).
We find this argument unpersuasive because Appellants'
Specification and claims provide no specific standard to determine what
limitations are imposed by the phrase "ordinary nutritional requirements for
an aged pet." A single example of a "typical [aged] diet" is disclosed in the
Specification (FF 1) that is very similar in composition to the adult pet foods
taught by Dzanis (FF 2-3). Indeed, in comparing the adult cat food in
Dzanis to that "typical [aged] diet," Dzanis has 26% protein relative to
19.5% protein, 9% fat relative to 10% fat, 0.6 % phosphorus relative to 0.5%
phosphorus and 0.2% sodium relative to 0.2% sodium (FF 1-3). Thus, the
Examiner reasonably finds the diet of Dzanis satisfies the functional
requirement of a "typical [aged] diet" in the absence of any specific
limitations. Appellants provide no rebuttal evidence, as opposed to attorney
argument, that the pet food compositions of Dzanis are insufficient to satisfy
the "ordinary nutritional requirements for an aged pet."
Appellants contend that
Neither Hamilton nor Sole provide any relevant information
concerning formulation of a companion pet diet meeting
ordinary nutritional requirements for an aged pet, much less
Appellant's claimed diet comprising a sufficient amount of
an antioxidant or mixture thereof, to inhibit the
deterioration of the mental capacity of an aged companion
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Application 12/977,798
pet, and which comprises [at] least about 50 ppm of Vitamin
C.
(App. Br. 9).
We do not find this argument persuasive because both Hamilton and
Sole teach nutritional supplementation with more than 50 ppm Vitamin C
(FF 6, 9), supplementation for pets such as dogs and cats (FF 4, 8), and
Hamilton specifically teaches that nutrients including Vitamin C "have been
found to be deficient in the diets of elders" (FF 5). With regard to the
intended use recitation "to inhibit the deterioration of the mental capacity of
an aged companion pet," a "mere statement of a new use for an otherwise
old or obvious composition cannot render a claim to the composition
patentable." In re Zierden, 411 F.2d 1325, 1328 (CCPA 1969).
Appellants contend that "Hamilton simply mentions 'dogs and cats'
twice in the specification, while expounding on the use of Boost, Gatorade,
Starbucks, Jamba Juice, Weight Watchers, Slim Fast beverages, nutrition
bars and the like as carriers of nutritional supplements for humans" (App.
Br. 9).
We find this argument unpersuasive because Hamilton and Sole
specifically suggest the use of the compositions in pets such as dogs and cats
(FF 4, 8). Disclosed examples and preferred embodiments do not constitute
a teaching away from a broader disclosure or non-preferred embodiments.
In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971). Therefore, that human
compositions may be preferred by Hamilton and Sole does not teach away or
render unobvious pet food compositions, particularly when Hamilton teaches
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that "[i]t is a further object of the present invention to improve the diet of not
only humans but also pets such as dogs, cats" (FF 4).
We recognize, but find unpersuasive, Appellants attempt to compare
the well-known antioxidant Vitamin C to the experimental drug fialuridine
because we agree with the Examiner that there is no evidence "to expect that
those antioxidants taught by Hamilton and Sole would work differently in
animals such as cats and dogs" (Ans. 16). That an experimental drug has
deleterious effects is not particularly relevant to the efficacy of Vitamin C as
a known nutrient.
Appellants contend that "one of ordinary skill could not identify
which components would be result effective variables (much less optimize
them) in Appellant's companion pet diet meeting the ordinary nutritional
requirements for an aged pet, much less one inhibiting deterioration of the
mental capacity or increasing mental capacity in that aged pet" (App. Br.
11).
We are not persuaded. As already noted, the intended use recitations
of "nutritional requirements for an aged pet" and "inhibit[ing] deterioration
of the mental capacity" impose no specific structural requirements that
distinguish the pet diet from the dog and cat diets taught by Dzanis. The
only structural limitation is the requirement for at least 50 ppm Vitamin C,
an amount taught by both Hamilton and Sole (FF 6, 9) and suggested for use
in dogs and cats by both Hamilton and Sole (FF 4, 8). Moreover, Hamilton
teaches optimizing the amounts of components, teaching that "to take into
account the different nutritional needs of older persons, we increase calcium
to half the RDA of 1200 mg, magnesium to 100 mg, and vitamin D to 150
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Application 12/977,798
mg" (FF 7). While Hamilton does not expressly list Vitamin C, the ordinary
artisan would have recognized that the teaching to optimize the amounts of
some of the nutrients listed by Hamilton along with Vitamin C (FF 5)
reasonably renders the optimization of Vitamin C obvious as well.
Conclusion of Law
The evidence of record supports the Examiner's conclusion finding
obvious a pet food composition "meeting ordinary nutritional requirements
for an aged pet" and comprising 50 ppm vitamin C as required by claim 1.
B. Double Patenting
Appellants do not separately argue the double patenting rejections,
instead arguing that "the rejection is premature" (App. Br. 13).
The Examiner finds that "the rejections are still appropriate for the
reasons of record" (Ans. 19).
We find that the Examiner has the better position. The instant
situation differs from that in Ex parte Moncla, 95 USPQ2d 1884 (BP AI June
22, 2010) (precedential), where the obvious-type double patenting rejection
was the only rejection remaining and was provisional because the related
application was still pending. In the instant case, US 11/154,210 issued as
US 8,592,478 on Nov. 26, 2013 rendering this rejection no longer
provisional and the rejection over the claims of US patent 6,914,071 is not
provisional. Only the rejections over US 12/528,153 and 12/528,164 remain
provisional.
We therefore summarily affirm the obviousness-type double patenting
rejections. See Manual of Patent Examining Procedure§ 1205.02 ("If a
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ground of rejection stated by the examiner is not addressed in the appellant's
brief, that ground of rejection will be summarily sustained by the Board.")
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over Dzanis, Hamilton, and Sole. Claims 2-8, 10, 11,
23-25, and 37 fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
We affirm the rejection of claims 1-8, 10, 11, 23-25, and 37 on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1, 2, and 4--18 of copending Application No.
11/154,210.
We affirm the rejection claims 1-8, 11, and 37 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1, 2, 5, and 7-10 of copending Application No. 12/528,153 (Ans. 10-
11 ).
We affirm the rejection claims 1---6 and 37 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1, 2, 6, 10, and 21 of copending Application No. 12/528,164 (Ans.
11 ).
We affirm the rejection claims 1-8, 10, 11, 23-25, and 37 on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-11 of US 6,914,071.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED
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