Ex Parte Zicker et alDownload PDFPatent Trial and Appeal BoardMay 10, 201611718963 (P.T.A.B. May. 10, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111718,963 0610512007 23909 7590 05/12/2016 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. 7449-00-HL 2669 EXAMINER WINSTON, RANDALL 0 ART UNIT PAPER NUMBER 1655 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 STEVEN CURTIS ZICKER, INKE PAET AU-ROBINSON, and KAREN JOY WEDEKIND Appeal2014-002574 Application 11/718,963 Technology Center 1600 Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and RYAN H. FLAX, Administrative Patent Judges. MILLS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a). The Examiner has rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF CASE The following claims are representative. 1. A method of treating deterioration of cognitive function in a senescent companion animal in need thereof, wherein the companion animal is a mammal, wherein the method comprises administering to the senescent mammal a pet food composition comprising (i) three or more antioxidants selected from a first group consisting of vitamin E, vitamin C, lipoic acid and 1-camitine; (ii) one or more antioxidants selected from a second group consisting of astaxanthin, beta-carotene, glutathione, N-acetylcysteine, soy isoflavanone( s ), S-adenosylmethionine, taurine, spinach pomace, tomato pomace, citrus pulp, grape pomace, carrot granules, broccoli, com gluten meal, rice bran, algae, curcumin; and (iii) one or more antioxidants selected from a third group consisting of coenymze Q 10, lutein, lycopene, tocotrienol( s ), selenium, and green tea; and the total amount of the three or more antioxidants in the first group and the one or more antioxidants in the second group and the one or more antioxidants in the third group in the composition are sufficient to treat deterioration of cognitive function in a senescent companion animal in need thereof, wherein the cognitive function is at least one cognitive function chosen from memory loss, memory impairment, learning impairment, disorientation, and reduction in mental alertness. 48. The method of claim 1 wherein the three or more antioxidants in the first group, the one or more antioxidants in the second group, and the one or more antioxidants in the third group are sufficient to modulate expression of one or more genes in said senescent companion animal. 2 Application 2014-002574 Appeal 11/718,963 Cited References Zicker Grounds of Rejection US 2002/0119182 Al Aug. 29, 2002 Claims 1, 3, 5, 31, 35, 48, and 49 stand rejected under 35 USC § 103(a) as being unpatentable over Zicker. FINDINGS OF FACT The Examiner's findings of fact are set forth in the Answer at pages 3-7. PRINCIPLES OF LAW In making our determination, we apply the preponderance of the evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). "In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant." In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citations omitted). "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 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). 3 Application 2014-002574 Appeal 11/718,963 Obviousness We agree with the Examiner's fact finding, statement of the rejection, and responses to Appellants' arguments as set forth in the Answer. We find that the Examiner has provided evidence to support a prima facie case of obviousness. We provide the following additional comment to the Examiner's argument set forth in the Final Rejection and Answer. Appellants contend that, Zicker is directed to a method for inhibiting the onset of deterioration of mental capacity in companion animals in their aged years, which method involves feeding the reported compositions to healthy animals in their adult years. There is nothing in Zicker regarding treatment of deterioration of cognitive function in a senescent companion animal in need thereof Br. 4. We are not persuaded. The Specification, page 8, describes "deterioration of cognitive function". In particular, the Specification states that In some embodiments, this invention provides methods for treating, preventing, inhibiting, or reversing deterioration of cognitive and/or physical function of a mammal associated with aging comprising administering to the mammal one or more antioxidants whose total amount is effective to modulate expression of one or more genes. In some embodiments, those methods improve the oxidative status of the mammal. Cognitive function associated with aging can refer to symptoms of mental deterioration, for example, memory loss or impairment, learning impairment, disorientation, and reduction in mental alertness. Spec. i-fi-1 65---66, emphasis added. Zicker states that, "Essentially the deterioration of mental capacity can be stopped or delayed" by their disclosed composition and method. Id. at i-f 15. See also, Abstract and i17. 4 Application 2014-002574 Appeal 11/718,963 Therefore, a decline in cognitive function associated with aging, as disclosed in Zicker, is encompassed by Appellants' claim language "deterioration of cognitive function." In sum, an aging animal with changing mental capacity, as in Zicker i-f 2, is an animal in need of treatment of deterioration of cognitive function, i-f 15. Appellants have presented no evidence showing that the aging animal of Zicker and its diminished mental capacity is different from Appellants' companion animal with "deterioration of cognitive and/or physical function of a mammal associated with aging." Spec. i-fi-1 65---66. Appellants further argue that Zicker discloses the use of one or more antioxidants, any of which can be selected from an extensive list of possible antioxidants. See Zicker at paragraphs [0016], [0018]-[0028], and [0030]-[0038]. Aside from the compositions of the Zicker examples, which include vitamin C, L-camitine and alpha lipoic acid, there is no specific guidance in Zicker of any particular combination of antioxidants, much less the combination recited in the instant claims. Indeed, the Examiner admits that Zicker "does not teach the combination of the particular embodiment of each claimed active ingredient .... " Br. 6. We are not persuaded. Zicker contemplates combinations or mixtures of its disclosed antioxidants, which overlap with the antioxidants recited by the claims. Zicker, Abstract, i-fi-15-9, 16. Appellants present no evidence that Zicker teaches away from mixtures or certain mixtures of antioxidants, or that one of ordinary skill in the art would have not selected the claimed combination of antioxidants disclosed in Zicker. 5 Application 2014-002574 Appeal 11/718,963 Claim 48 Appellants contend that Zicker does not disclose or suggest any method of treating deterioration of cognitive function in a senescent companion animal in need thereof and, as the Examiner even acknowledged, Zicker does not teach Appellants' recited combination of antioxidants. Thus Zicker does not render claim 1, nor any claim dependent thereon obvious. Furthermore, obviousness cannot be based on an allegation of inherency. The inherency of an attribute or advantage and its obviousness are entirely different questions. Obviousness cannot be predicated on what is not known at the time an invention is made, even if the inherency of a certain feature is later established .... Here, one of skill in the art would have had no way to identify and optimize a method of treating deterioration of cognitive function in a senescent companion animal in need thereof by modifying the diet of Zicker to the claimed diet, because whatever the effect of the Zicker diet in this regard, it was not recognized. Br. 7-8. "From the standpoint of patent la\v, a compound and all of its properties are inseparable; they are one and the same thing." In re Papesch, 315 F.2d 381, 391 (CCPA 1963). The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35U.S.C.§102or§103: "[t]he inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (affirmed a 35 U.S.C. § 103 rejection based in part on inherent disclosure in one of the references). "When the claimed compositions are not novel they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in the prior art." In re Spada, 911 F .2d 6 Application 2014-002574 Appeal 11/718,963 705, 709 (Fed. Cir. 1990). It is not invention to perceive undetected qualities of an already known discovery, therefore, the claimed invention is not the product of innovation, but of ordinary skill and common sense. In re Kubin, 561F.3d1351, 1357 (Fed. Cir. 2009) (citing Gen. Elec. Co. v. Jewel Incandescent Lamp Co., 326 U.S. 242, 249 (1945)). In other words, Appellants' claim 48 limitation that, "one or more antioxidants in the third group are sufficient to modulate expression of one or more genes in said senescent companion animal," is inherent in Zicker's disclosure of CoQ 10 mixed with other antioxidants in a companion pet diet. There is no Reply Brief of record. Arguments not made are waived. See 3 7 C.F.R. § 41.37( c)(l )(vii). The obviousness rejection is affirmed for the reasons of record. CONCLUSION OF LAW The cited references support the Examiner's obviousness rejection, which is affirmed for the reasons of record. All pending claims fall. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED 7 Copy with citationCopy as parenthetical citation